IP/N/1/AUS/C/14  
IP/N/1/AUS/I/21  
 
18 June 2013  
(13-3160)  Page: 1/203  
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 Intellectual Property Legislation Amendment (Raising the 
Bar) Regulation 2013 (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 2013 portant modification de la législation 
relative à la propriété intellectuelle ("Relever la barre") (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 2013 que modifica la 
legislación relativa a la propiedad intelectual (Reforzamiento de 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/C/14 • IP/N/1/AUS/I/21 
 
- 2 - 
 
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PP 3 à 203 - Offset (fichier Pdf joint) PP 3-203 - Offset (fichero Pdf adjunto)   
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Intellectual Property Legislation 
Amendment (Raising the Bar) 
Regulation 2013 (No. 1) 
 
Select Legislative Instrument No. 31, 2013 
I, Quentin Bryce, Governor-General of the Commonwealth of Australia, 
acting with the advice of the Federal Executive Council, make the 
following regulation under the Patents Act 1990 , the Trade Marks Act 
1995, the Designs Act 2003 and the Copyright Act 1968. 
Dated   14 March 2013 
Quentin Bryce  
Governor-General 
By Her Excellency’s Command  
Greg Combet 
Minister for Industry and Innovation 
 
   
   
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No. 31 , 2013  Intellectual Property Legislation Amendment (Raising the Bar) 
Regulation  2013 (No. 1)  i 
 
OPC50135 - 18/02/2013 5:04:48 PM Contents 
1 Name of regulation ............................................................................ 2 
2 Commencement .................................................................................  2 
3 
Authority ...........................................................................................  2 
4 Schedule(s) ........................................................................................ 2 
Schedule 1—Amendments relating to the quality of granted 
patents  3 
Patents Regulations 1991  3 
Schedule 3—Amendments relating to reducing delays in 
resolution of patent and trade mark applications  18 
Patents Regulations 1991  18 
Trade Marks Regulations 1995  35 
Designs Regulations 2004  96 
Schedule 4—Amendments relating to IP professionals  97 
Patents Regulations 1991  97 
Trade Marks Regulations 1995  115 
Schedule 5—Amendments relating to improving mechanisms 
for trade mark and copyright enforcement  133 
Copyright Regulations 1969  133 
Trade Marks Regulations 1995  134 
Schedule 6—Amendments relating to simplifying the IP system  143 
Designs Regulations 2004  143 
Patents Regulations 1991  145 
Trade Marks Regulations 1995  176 
Schedule 7—Amendments relating to transitional provisions  181 
Patents Regulations 1991  181 
Trade Marks Regulations 1995  194 
Designs Regulations 2004  199 
 
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OPC50135 - 18/02/2013 5:04:48 PM 1  Name of regulation 
  This regulation is the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1) . 
2  Commencement 
  This regulation commences on 15 April 2013. 
3  Authority 
  This regulation is made under: 
 (a) the Patents Act 1990 ; and 
 (b) the Trade Marks Act 1995 ; and 
 (c) the Designs Act 2003 ; and 
 (d) the Copyright Act 1968 . 
4  Schedule(s) 
  Each instrument that is specified in a Schedule to this instrument is 
amended or repealed as set out in the applicable items in the 
Schedule concerned, and any other item in a Schedule to this 
instrument has effect according to its terms. 
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quality of granted patents 
   
Patents Regulations 1991 
1  Before regulation 3.1 
Insert: 
Division 1 —Applications 
2  Subregulation 3.3(7) 
Repe
al the subregulation. 
3  Regulations 3.12 and 3.13 
Repeal the regulations, substitute: 
Division 2 —Priority date of claim 
3.12  What this Division is about 
 (1) This Division determines the priority date of a claim: 
 (a) for subsection 36(4) of the Act ( see regulation 3.13); and 
 (b) for paragraph 43(2)(a) of the Act (see regulations 3.13A to 
3.13E); and 
 (c) for section 114 of the Act ( see regulation 3.14). 
 (2) However, if more than one of regulations 3.13A to 3.13E applies to 
a single claim, the priority date of the claim, for paragraph 43(2)(a) 
of t
he Act, is the earliest of the dates that is determined by those 
regulations. 
 (3) Despite regulations 3.13A to 3.13E, the priority date of a claim, for 
paragraph 43(2)(a) of the Act, is no later than the date of the filing 
of the specification. 
 (4) In this Division, a document clear ly discloses  an invention if the 
document discloses the invention in a manner that is clear enough, 
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OPC50135 - 18/02/2013 5:04:48 PM and complete enough, for the invention to be performed by a 
perso
n skilled in the relevant art. 
3.13  Priority date for application by person declared under 
section 36 of the Act 
 (1) This regulation determines the priority date of a claim under 
subse
ction 36(4) of the Act. 
 (2) If the claimed invention is clearly disclosed in the specification 
mentioned in paragraph 36(1)(c) of the Act: 
 (a) if the specification was filed in relation to a complete 
application, the priority date of the claim is the priority date 
that the claim would have had if the claim was included in 
the specification; and 
 (b) if the specification was filed in relation to a provisional 
appli
cation, the priority date of the claim is the date the 
specification was filed. 
 (3) If the claimed invention is not clearly disclosed in the specification 
mentioned in paragraph 36(1)(c) of the Act, the priority date of the 
claim is the date the specification for the complete application 
referred to in subsection 36(4) of the Act was filed. 
3.13A  Priority date for PCT application 
 (1) This regulation applies to a claim if: 
 (a) the circumstance mentioned in subregulation (2) applies to 
the invention defined in the claim; and 
 (b) either: 
 (i) a document mentioned in subregulation (4) clearly 
disc
loses the invention in the claim; or 
 (ii) more than one of the documents mentioned in 
paragraph (4)(a), considered together, clearly disclose 
the invention in the claim. 
Circumstance 
 (2) For paragraph (1)(a), the circumstance is that the specification 
containing the claim that defines the invention was filed for a PCT 
application, and: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) either: 
 (i) the PCT application claims the priority of an earlier 
application under Article 8 of the PCT; or 
 (ii) the PCT application has been amended to include a 
claim to priority from an earlier application that, at the 
time of filing the PCT application, was a claim to 
priority that could have been made under Article 8 of 
the PCT; and 
 (b) either: 
 (i) the earlier application was made in Australia no more 
than 12 months before the filing date of the PCT 
application; or 
 (ii) the earlier application was made in Australia more than 
12 months before the filing date of the PCT application, 
and: 
 (A) a receiving Office has restored the priority 
under Rule 26bis.3, and the restored priority has 
not been found to be ineffective by the 
Commissioner or a prescribed court under 
Rule 49ter.1; or 
 (B) the Commissioner has restored the priority 
under Rule 49ter.2; or 
 (C) the Commissioner has granted an extension of 
time under section 223 of the Act that has the 
effect of restoring a right of priority; or 
 (iii) the earlier application is a basic application that was the 
first application made in a Convention country in 
relation to the invention, and: 
 (A) the earlier application was made no more than 
12 months before the filing date of the PCT 
application; or 
 (B) the earlier application was made more than 12 
months before the filing date of the PCT 
application, and a receiving Office has restored 
the priority under Rule 26bis.3, and the restored 
priority has not been found to be ineffective by 
the Commissioner or a prescribed court under 
Rule 49ter.1; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (C) the earlier application was made more than 12 
months before the filing date of the PCT 
application, and the Commissioner has restored 
the priority under Rule 49ter.2; or 
 (D) the earlier application was made more than 12 
months before the filing date of the PCT 
application, and the Commissioner has granted 
an extension of time under section 223 of the 
Act that has the effect of restoring a right of 
priority; or 
 (iv) the earlier application is a basic application that was 
made after a basic application mentioned in 
subparagraph (iii). 
 (3) For the purposes of this regulation, if a provisional specification 
was filed for a basic application when the application was made, a 
compl
ete specification later filed for the basic application is taken 
to be another basic application from which the PCT application 
claims priority, made on the day when the complete specification 
was
 filed. 
Documents 
 (4) For paragraph (1)(b), the documents are: 
 (a) the documents filed for the earlier application at the time the 
application was made; and 
 (b) the complete specification for the PCT application, if: 
 (i) the invention in the claim relates to a micro-organism; 
and 
 (ii) the documents filed for the earlier application, at the 
time the application was made, included the relevant 
information on the characteristics of the micro-organism 
that was known to the applicant; and 
 (iii) the documents filed for the earlier application, at the 
time the application was made, clearly disclosed the 
invention, other than in relation to the description of the 
micro-organism; and 
 (iv) the requirements of paragraph 6(c) of the Act are 
satisfied by the complete specification; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (v) the micro-organism was deposited with a prescribed 
depository institution, in accordance with the rules of 
the Budapest Treaty, on or before the date the earlier 
application was made. 
Priority date 
 (5) Subject to regulation 3.12, the priority date is: 
 (a) the date when the earlier application was made; or 
 (b) if there is more than one earlier application —the date the 
earliest of those applications was made for which 
paragraph (1)(b) is satisfied. 
3.13B  Priority date for Convention application 
 (1) This regulation applies to a claim if: 
 (a) the specification containing the claim that defines the 
invention was filed for: 
 (i) a Convention application; or 
 (ii) a complete application that has been amended to 
become a Convention application; and 
 (b) a document mentioned in subregulation (2), or more than one 
of 
the documents mentioned in paragraph (2)(a) considered 
together, clearly discloses the invention in the claim. 
 (2) For subregulation (1)(b), the documents are: 
 (a)
 the documents filed for a related basic application at the time 
when the application was made; and 
 (b) the complete specification for the Convention application, if: 
 (i) the invention in the claim relates to a micro-organism; 
and 
 (ii) the documents filed for a related basic application, at the 
time when the application was made, included the 
relevant information on the characteristics of the 
micro-organism that was known to the applicant; and 
 (iii) the documents filed for a related basic application, at the 
time when the application was made, clearly disclosed 
the invention, other than in relation to the description of 
the micro-organism; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (iv) the requirements of paragraph 6(c) of the Act are 
satisfied by the complete specification; and 
 (v) the micro-organism was deposited with a prescribed 
depository institution, in accordance with the rules of 
the Budapest Treaty, on or before the date when the 
related basic application was made. 
 (3) For this regulation, if a provisional specification was filed for a 
related basic application when the application was made, a 
complete specification later filed for the basic application is taken 
to be another related basic application made on the day the 
complete specification was filed. 
 (4) Subject to regulation 3.12, the priority date is: 
 (a) the date the related basic application was made; or 
 (b) if there is more than one related basic application —the date 
the earliest of those applications was made for which 
paragraph (1)(b) is satisfied. 
3.13C  Priority date for complete application associated with 
provisional application 
 (1) This regulation applies to a claim if: 
 (a) the specification containing the claim that defines the 
invention was filed for a complete application that is 
associated with a provisional application under section 38 of 
the Act; and 
 (b) a document mentioned in subregulation (2), or more than one 
of 
the documents mentioned in paragraph (2 )(a) considered 
together, clearly discloses the invention in the claim. 
 (2) For paragraph (1)( b), the documents are: 
 (a) the documents filed for the provisional application at the time 
when the application was made; and 
 (b) the complete specification for the complete application, if: 
 (i) the invention in the claim relates to a micro-organism; 
and 
 (ii) the documents filed for the provisional application, at 
the time the application was made, included the relevant 
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that was known to the applicant; and 
 (iii) the documents filed for the provisional application, at 
the time the application was made, clearly disclosed the 
invention, other than in relation to the description of the 
micro-organism; and 
 (iv) the requirements of paragraph 6(c) of the Act are 
satisfied by the complete specification; and 
 (v) the micro-organism was deposited with a prescribed 
depository institution, in accordance with the rules of 
the Budapest Treaty, on or before the date the 
provisional application was made. 
 (3) Subject to regulation 3.12, the priority date is: 
 (a) the date the provisional application was made; or 
 (b) if there is more than one provisional application —the date 
the earliest of those applications was made for which 
parag
raph (1)(b) is satisfied. 
3.13D  Priority date for divisional application filed prior to grant of 
patent 
 (1) This regulation applies to a claim if: 
 (a) the specification containing the claim that defines the 
invention was filed for: 
 (i) a divisional application under section 79B of the Act; or 
 (ii) a complete application that has been amended to 
become a divisional application under section 79B of 
the Ac
t; and 
 (b) a document mentioned in subregulation (2 ) clearly discloses 
t
he invention in the claim. 
 (2) For paragraph (1)( b), the documents are: 
 (a) the specification mentioned in subsection 79B(1) of the Act 
(the earlier specification ), unless: 
 (i) the deposit requirements must be satisfied in relation to 
the invention to comply with paragraph 40(2)( a) of the 
Act; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) when the divisional application under section 79B of the 
Act is made, the period prescribed in subregulation 
1.5(1) has ended in relation to the earlier specification; 
and 
 (iii) the requirements of paragraph 6(c) of the Act are not 
satisfied in relation to the earlier specification; and 
 (b) the complete specification for the divisional application, if: 
 (i) the invention in the claim relates to a micro-organism; 
and 
 (ii) the earlier specification is a prescribed document; and 
 (iii) on the date when the first application was made, the 
earlier specification included the relevant information 
on the characteristics of the micro-organism that was 
known to the applicant; and 
 (iv) on the date when the first application was made, the 
earlier specification clearly disclosed the invention, 
other than in relation to the description of the 
micro-organism; and 
 (v) the requirements of paragraph 6(c) of the Act are 
sat
isfied by the complete specification for the divisional 
application; and 
 (vi) the micro-organism was deposited with a prescribed 
depository institution, in accordance with the rules of 
the Budapest Treaty, on or before the date when the first 
application was made. 
 (3) Subject to regulation 3.12, the priority date is the priority date that 
the claim would have had if the claim was in the earlier 
specification. 
3.13E  Priority date for divisional application after grant of 
innovation patent 
 (1) This regulation applies to a claim if: 
 (a) both of the following apply: 
 (i) the specification containing the claim that defines the 
invention was filed for a divisional application under 
section 79C of the Act; 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) examination of the divisional application is requested 
within 2 months from the date of the grant of the 
divisional application; and 
 (b) the specification referred to in subsection 79C(1) of the Act 
clearly discloses the invention in the claim. 
 (2) Subject to regulation 3.12, the priority date is the priority date that 
the c
laim would have had if the claim had been in the specification 
mentioned in subsection 79C(1) of the Act. 
4  After regulation 3.14 
Insert: 
Divisi on 3—Examination 
3.14A  Request for international-type search relating to  provisional 
application 
 (1) An applicant for a provisional application may make a request 
under Article 15(5) of the PCT for an international-type search in 
relation to the application. 
 (2) The applicant must make the request within 10 months from the 
date the provisional application was filed. 
 (3) If more than one International Searching Authority is competent 
under Article 15(5) of the PCT to carry out the search, the 
Commissioner may choose the Authority that will carry out the 
search. 
3.14B  Request for preliminary search and opinion relating to 
complete application 
 (1) This regulation applies to  a complete application for a standard 
patent made on or after 15 April 2013. 
 (2) If the applicant has not asked for an examination under section 44 
of t
he Act, the applicant may request a preliminary search and 
opinion relating to the application under section 43A of the Act. 
 (3) The request must be in the approved form. 
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OPC50135 - 18/02/2013 5:04:48 PM Note: Section 43A of the Act does not require a request to be made before 
the Commissioner conducts a preliminary search and opinion. 
5  Paragraph 3.18(2 )(d) 
Repeal the paragraph. 
6  After subregulation 9.2( 1) 
Insert: 
 (1A) A request must state: 
 (a) the grounds of the request; and 
 (b) the reasons why the grounds are relevant to the complete 
specification. 
7  Subregulations 9.2( 2) and (2A) 
Repeal the subregulations, substitute: 
 (2) Subregulations (2A) and (3) apply if the request includes an 
assertion that the invention, so far as claimed in any claim and 
when compared with the prior art base that existed before the 
priority date of that claim: 
 (a) is not novel; or 
 (b) for a standard patent —does not involve an inventive step; or 
 (c) for an innovation patent —does not involve an innovative 
step. 
 (2A) For subregulation (2), the request must: 
 (a) identify the documents on which the assertion is based; and 
 (b) state the relevance of each document. 
8  Subregulation 9.2( 4) 
Repeal the subregulation, substitute: 
 (4) If the request does not comply with subregulation (1A), or 
subregulations (2), (2A) and (3) if applicable, the Commissioner 
may decide not to re-examine the complete specification. 
9  After regulation 10.2 
Insert: 
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OPC50135 - 18/02/2013 5:04:48 PM 10.2A  Documents considered for determining whether amendment 
allowed 
  For paragraph 102(1 )(b) of the Act, the following documents are 
prescribed: 
 (a) an abstract that was filed with the complete specification; 
 (b) a missing part or element of a complete specification that was 
incorporated into the specification, in accordance with 
regulation 3.5A or Rule 20.5 or 20.6 of the PCT; 
 (c) an amendment that has been made to the complete 
specification after filing, for the purpose of: 
 (i) correcting a clerical error or obvious mistake; or 
 (ii) complying with paragraph 6(c) of the Act. 
10.2B  Amendments not allowable for patent requests 
 (
1) This regulation is made for subsection 102(2D) of the Act. 
 (2) An amendment of a patent request is not allowable if: 
 (a) the patent request has been accepted under section 49 or 52 
of the Act; and 
 (b) the amendment would convert the patent application from: 
 (i) an application for a standard patent to an application for 
an innovation patent; or 
 (ii) an application for an innovation patent to an application 
for a standard patent. 
 (3) I f: 
 (a) a request for leave to amend a patent request for a standard 
patent is filed within 3 weeks before the date a notice is due 
to be published in the Official Journal under section 54 of the 
Act in relation to the specification; and 
 (b) the amendment would: 
 (i) convert the patent application from an application for a 
standard patent to an application for an innovation 
patent; or 
 (ii) change the priority date of the application to a date that 
is later than the priority date that is currently recorded 
for the application; 
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OPC50135 - 18/02/2013 5:04:48 PM the amendment is not allowable until after the date the notice is 
published. 
 (4) An amendment of a patent request is not allowable if: 
 (a) the patent request has been accepted under section 49 or 52 
of the Act; and 
 (b) the amendment would convert the patent application into a 
further complete application within the meaning of 
section 79B or 79C of the Act. 
 (5) An amendment of a patent request is not allowable if: 
 (a) the amendment would convert the patent application into a 
further complete application within the meaning of 
section 79B of the Act; and 
 (b) the period allowed under subsection 79B(3) of the Act for 
making a further complete application has ended. 
 (6) An amendment of a patent request is not allowable if: 
 (a) the amendment would convert the patent application into a 
further complete application within the meaning of 
section 79C of the Act; and 
 (b) the period allowed under subsection 79C(2) of the Act for 
making a further complete application has ended. 
 (7) An amendment of a patent request is not allowable after the patent 
has been granted. 
10.2C  Amendments not allowable for complete specifications 
 (1) This regulation is made for subsection 102(2D) of the Act. 
 (
2) An amendment of a complete specification is not allowable if: 
 (a) the amendment relates to a matter mentioned in 
paragraph 6(c) of the Act; and 
 (b) after the amendment was made, the specification would not 
include each of the matters specified in that paragraph. 
 (3) An amendment of a complete specification is not allowable if the 
Commissioner: 
 (a) has given a copy of a request for leave to amend under 
subregulation 10.2(8) or ( 9) to a person; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) has not given the person a reasonable opportunity to be 
heard. 
 (4) An amendment of a complete specification for an innovation 
patent, other than an amendment proposed in response to a 
direction under regulation 3.2B, is not allowable until after the 
patent has been granted. 
 (5) An amendment of a complete specification for an innovation patent 
is not allowable if the amendment would result in the specification 
claiming: 
 (a) a thing mentioned in subsection 18(2) of the Act; or 
 (b) a thing mentioned in subsection 18(3) of the Act (other than a 
thing also mentioned in subsection 18(4) of the Act). 
 (6) An amendment of a complete specification is not allowable if 
making an amendment would be contrary to section 112 or 112A 
of the Act. 
10  Regulation 10.3 
Repeal the regulation, substitute: 
10.3  Amendments not allowable for other documents 
 (1) For a provisional specification, an amendment of the provisional 
specification is not allowable if, as a result of the amendment, the 
specification would disclose matter that extends beyond that 
disclosed in the following documents taken together: 
 (a) the provisional specification as filed; 
 (b) an abstract that was filed with the provisional specification; 
 (c) a missing part of a provisional specification that was 
incorporated into the specification in accordance with 
regulation 3.5A. 
 (2) An amendment of an abstract is not allowable. 
Note: An abstract may be substituted under regulation 3.4. 
11  Paragraph 10.4( a) 
Omit “ 10.3( 4)”, substitute “ 10.2C(3) ”. 
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OPC50135 - 18/02/2013 5:04:48 PM 12  Paragraph 10.5(1)(b) 
Omit “ the Commissioner believes on reasonable grounds ”, substitute 
“the Commissioner is satisfied, on the balance of probabilities, ”. 
13  Paragraph 10.5(1)(c) 
Omit “ the Commissioner believes on reasonable grounds ”, substitute 
“the Commissioner is satisfied, on the balance of probabilities, ”. 
14  Subregulation 19.2( 2) 
Repeal the subregulation. 
15  At the end of subregulation 22.2(2) 
Add: 
 ; (e) if the Commissioner decides to conduct a search as part of 
the examination of a patent request and complete 
specification for a standard patent, the fee is payable when 
the Commissioner notifies the applicant that the fee is 
payable. 
16  Paragraph 22.2B(1 )(a) 
Omit “ 202 or 203 ”, substitute “ 202, 203 or 206 ”. 
17  Paragraph 22.2C(1 )(a) 
Omit “ 204, 205 or 206 ”, substitute “ 204 or 205 ”. 
18  Part 2 of Schedule 7 (table item 206) 
Repeal the item, substitute: 
206 Search by the Commissioner in relation to a 
patent request and complete specification for a 
standard patent  as part of an examination, if the 
complete application was made on or after 
15 April 2013  $1,400  
19  Part 2 of Schedule 7 (table item 236) 
Omit “ subregulation 19.2( 2) for information that requires ”, substitute 
“regulation 3.14A for ”. 
20  Part 7 of Schedule 7 (after table item 236) 
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236A  Preliminary search and opinion by the 
Commissioner in relation to a patent request and 
complete specification under subsection  43A(1) 
of the Act  $2,200  
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 3— Amendments relating to 
reducing delays in resolution of patent 
and trade mark applications 
   
Patents Regulations 1991 
1  Subregulations 1.3(4) and (5) 
Repeal the subregulations, substitute: 
 (4) If the Commissioner gives a document to a person, the document is 
taken to have been given to the person on the day the document is 
dated by the Commissioner. 
 (5) The Commissioner may give a document to a person by: 
 (a) making the document available to the person in an electronic 
form; and 
 (b) notifying the person that the document is available. 
2  Chapter 5 
Repeal the Chapter, substitute: 
Chapter 5—Opposition 
Part
 5.1—Preliminary 
   
5.1  What this Chapter is about 
  
This Chapter sets out requirements for the following: 
 (a) the filing of notices of opposition and associated documents; 
 (b) the amending of filed documents; 
 (c) the dismissal of an opposition; 
 (d) the hearing of an opposition; 
 (e) associated matters. 
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OPC50135 - 18/02/2013 5:04:48 PM 5.2  Definitions 
General 
  In this Chapter: 
applicant means: 
 (a) for a section 101M opposition —the patentee of an innovation 
patent; or 
 (b) for any other opposition —a person whose application or 
request under the Act or th ese Regulations is opposed by an 
opponent. 
notice of opposition means a notice filed under regulation 5.4, 5.6 
or 5.10. 
opponent means:  
 (a) for a section 101M opposition —a person who files a notice 
of opposition under regulation 5.6; or 
 (b) for any other opposition —a person who files a notice of 
opposition under regulation 5.4 or 5.10. 
party  means an applicant or an opponent. 
procedural opposition  means an opposition begun by filing a 
notice of opposition under regulation 5.10. 
section 101M opposition means an opposition under section 101M 
of t
he Act. 
statement of grounds and particulars means a statement by an 
opponent that sets out: 
 (a) the grounds on which the opponent intends to rely; and 
 (b) the facts and circumstances forming the basis for the 
grounds. 
substantive opposition  means: 
 (
a) an opposition begun by filing a notice of opposition under 
regulation 5.4; or 
 (b) a section 101M opposition. 
Note: The following terms are defined in Schedule 1 to the Act: 
(a) approved form; 
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OPC50135 - 18/02/2013 5:04:48 PM (b) complete specification; 
(c) file; 
(d) patent request; 
(e) patentee; 
(f) re-examination. 
5.3  Commissioner may give direction about filing document or 
evidence 
 (1) If a document or evidence may or must be filed under this Chapter, 
the Commissioner may give a direction specifying: 
 (a) the number of copies of the document or evidence to be filed; 
and 
 (b) the form in which the document or evidence is to be filed ; 
and 
 (c) the means by which the document or evidence is to be filed. 
 (2) The Commissioner may make or revoke the direction as the 
Commissioner sees fit. 
 (3) If a party does not comply with the direction, the Commissioner 
may: 
 (a) treat the document or evidence as not having been filed; or 
 (b) tell the party to comply with the direction. 
Part 5.2 —Filing of opposition documents 
Division 5.2.1 —Substantive opposition 
5.4  Notice of opposition —standard patent opposition 
 (1) For section 59 of the Act, a person opposes the grant of a standard 
patent by filing a notice of opposition, in the approved form, within 
3 months from the day the notice of acceptance is published under 
paragraph 49(5)(b) of the Act. 
 (2) For subsection 75(1) of the Act, a person opposes the grant of an 
extension of the term of a standard patent by filing a notice of 
opposition, in the approved form, within 3 months from the day the 
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Act. 
 (3) The Commissioner must give an applicant in relation to a notice of 
opposition filed under subregulation (1) or (2) a copy of the notice 
of opposition as soon as practicable. 
5.5  Statement of grounds and particulars —standard patent 
opposition 
 (1) An opponent in a substantive opposition, other than a 
section 101M opposition, must file a statement of grounds and 
particulars within 3 months from the day the notice of opposition is 
filed. 
 (2) The statement of grounds and particulars must be: 
 (a) in the approved form; and 
 (b) accompanied by a copy of each document mentioned in the 
statement, unless the document: 
 (i) is open to public inspection; and 
 (ii) relates to a provisional or complete application for a 
patent. 
 (3) The Commissioner must give the applicant a copy of the statement 
and accompanying documents as soon as practicable. 
5.6  Notice of opposition and statement of grounds and particulars —
section 101M opposition 
 (1) For section 101M of the Act, a person opposes an innovation 
patent that has been certified by filing the following documents: 
 (a) a notice of opposition in the approved form; 
 (b) a statement of grounds and particulars; 
 (c) a copy of each document mentioned in the statement, unless 
the document: 
 (i) is open to public inspection; and 
 (ii) relates to a provisional or complete application for a 
patent. 
  (2) The documents: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) may be filed at any time after the certification of the patent; 
and 
 (b) must be filed at the same time. 
 (3) The Commissioner must give copies of the documents to the 
applicant as soon as practicable. 
5.7  Filing of evidence 
 (1) A party who intends to file evidence in a substantive opposition 
must: 
 (a) file the evidence within the relevant evidentiary period 
mentioned in regulation 5.8; and 
 (b) if the party files all the evidence before the end of the 
period—notify the Commissioner of that fact. 
 (2) The Commissioner must give a copy of any evidence filed by a 
party under regulation 5.8 to the other party: 
 (a) before the end of the period, if the Commissioner considers it 
appropriate to do so; or 
 (b) as soon as practicable after the relevant evidentiary period 
ends. 
 (3) The Commissioner must, as soon as practicable, notify: 
 (a) the other party of a notification under paragraph (1)(b); or 
  (b) if no notification is given under paragraph (1)(b) —the parties 
that: 
 (i) all the evidence for the period has been filed; or 
 (ii) no evidence was filed. 
5.8  Evidentiary periods 
Evidence in support 
 (1) An opponent in a substantive opposition must file any evidence in 
support of the opposition: 
 (a) for a section 101M opposition —at the same time as the 
documents mentioned in subregulation 5.6(1); or 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) for any other substantive opposition —within 3 months from 
the day the opponent files the statement of grounds and 
particulars under regulation 5.5. 
Evidence in answer 
 (2) If the opponent files evidence in support of the opposition, the 
applicant must file any evidence in answer to the evidence in 
support within 3 months from the day the Commissioner: 
 (a) gives the applicant: 
 (i) all the evidence in support; or 
 (ii) if the opponent files the evidence in support in 
instalments —the final instalment of the evidence in 
support; and 
 (b) notifies the applicant that all the evidence in support has been 
filed. 
 (3) If the opponent does not file any evidence in support of the 
opposition, the applicant must file any evidence in answer to the 
statement of grounds and particulars within 3 months from the day 
the Commissioner notifies the applicant that no evidence in support 
was filed. 
Evidence in reply 
 (4) If the applicant files evidence in answer under subregulation (2) or 
(3), the opponent must file any evidence in reply to the evidence in 
answer within 2 months from the day the Commissioner: 
 (a) gives the opponent: 
 (i) all the evidence in answer; or 
 (ii) if the applicant files the evidence in answer in 
instalments —the final instalment of the evidence in 
answer; and 
 (b) notifies the opponent that all the evidence in answer has been 
filed. 
5.9  Extension of time for filing evidence 
 (1) The Commissioner may extend an evidentiary period mentioned in 
regulation 5.8: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) if requested in writing by a party; or 
 (b) on the Commissioner’s own initiative.  
 (2) The Commissioner may extend the period only if the 
Commissioner is satisfied that: 
 (a) the party who intended to file evidence in the period: 
 (i) has made all reasonable efforts to comply with all 
relevant filing requirements under this Chapter; and 
 (ii) despite acting promptly and diligently at all times to 
ensure the appropriate evidence is filed within the 
period, is unable to do so; or 
 (b) there are exceptional circumstances that warrant the 
extension. 
 (3) The Commissioner must determine the length of the extended 
period having regard to what is reasonable in the circumstances. 
 (4) The Commissioner must notify the parties of the extension as soon 
as practicable. 
 (5) In this regulation: 
exceptional circumstances  includes the following: 
 (a) a circumstance beyond the control of a party that prevents the 
party from complying with a filing requirement under this 
Chapter; 
 (b) an error or omission by the Commissioner that prevents a 
party from complying with a filing requirement under this 
Chapter; 
 (c) an order of a court, or a direction by the Commissioner, that 
the opposition be stayed pending the completion of a related 
proceeding or action under the Act. 
Division 5.2.2 —Procedural opposition 
5.10  Notice of opposition 
Leave to amend filed document 
 (1) For subsection 104(4) of the Act, a person opposes a request for 
leave to amend a filed document by filing a notice of opposition, in 
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OPC50135 - 18/02/2013 5:04:48 PM the approved form, within 2 months from the day the notice of the 
granting of leave to amend is published under subregulation 
10.5(2). 
Note: For the grounds on which an amendment may be opposed, see 
regulation 5.21. 
Extension of time to do relevant act 
 (2) For subsection 223(6) of the Act, a person opposes the grant of an 
application for an extension of time to do a relevant act by filing a 
notice of opposition, in the approved form, within 2 months from 
the day the advertisement of the extension application is advertised 
under subsection 223(4) of the Act. 
Application for grant of licence 
 (3) For subregulation 22.21(4), a person opposes the grant of a licence 
by filing a notice of opposition, in the approved form, within 2 
months from the day the Commissioner gives the person a copy of 
the application under subregulation 22.21(3). 
Commissioner to give copy of notice to applicant 
 (4) The Commissioner must give an applicant in relation to 
subregulation (1), (2) or (3) a copy of the notice of opposition as 
soon as practicable. 
5.11  Statement of grounds and particulars 
 (1) An opponent in a procedural opposition must file a statement of 
grounds and particulars within one month from the day the notice 
of opposition is filed under regulation 5.10. 
 (2) The statement of grounds and particulars must be: 
 (a) in the approved form; and 
 (b) accompanied by a copy of each document mentioned in the 
statement of grounds and particulars, unless the document: 
 (i) is open to public inspection; and 
 (ii) relates to a provisional or complete application for a 
patent. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) The Commissioner must give the applicant a copy of the statement 
of grounds and particulars and accompanying documents as soon 
as practicable. 
5.12  Practice and procedure 
  The Commissioner may: 
 (a) decide the practice and procedure to be followed in a 
procedural opposition; and 
 (b) direct the parties accordingly. 
Part 5.3 —Amendments to opposition documents 
   
5.13  Application of regulation 22.22 
  
Regulation 22.22 does not apply to an amendment made under this 
Part. 
5.14  Notice of opposition —correction of errors or mistake 
 (1) An opponent may request the Commissioner in writing to amend 
the opponent’s notice of opposition to correct a clerical error or 
obvious mistake. 
 (2) The Commissioner must give the parties an opportunity to make 
representations about the proposed amendment. 
 (3) The Commissioner must, as soon as practicable: 
 (a) notify the parties of the Commissioner’s decision; and  
 (b) if the Commissioner decides to make the amendment —give 
the applicant  a copy of the amended notice of opposition. 
5.15  Notice of opposition —change of opponent 
 (1) This regulat ion applies if an opponent’s right or interest in an 
opposition is transferred to another person (the new opponent ) 
during an opposition. 
 (2) The new opponent may: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) tell the Commissioner that the right or interest in the 
opposition has been transferred to the new opponent; and 
 (b) request the Commissioner in writing to amend the notice of 
opposition to record the new opponent’s name.  
 (3) The Commissioner must give the applicant, the opponent and the 
new opponent an opportunity to make representations about the 
amendment. 
 (4) The Commissioner must: 
 (a) as soon as practicable: 
 (i) notify the parties of the Commissioner’s decision; and  
 (ii) if the Commissioner decides to make the amendment —
give the applicant  a copy of the amended notice of 
opposition; and 
 (b) ensure that the opposition proceeds in the name of the new 
opponent. 
5.16  Statement of grounds and particulars 
 (1) An opponent may request the Commissioner in writing to amend 
the opponent’s statement of grounds and particulars:  
 (a) to correct an error or omission in the grounds of opposition; 
or 
 (b) to update the grounds of opposition to reflect an amendment 
to the patent request or complete specification to which the 
statement relates; or 
 (c) to amend the facts and circumstances forming the basis for 
the grounds. 
 (2) The Commissioner must: 
 (a) notify the applicant of the opponent’s request; and  
 (b) give the parties an opportunity to make representations about 
the amendment. 
  (3) The Commissioner must not make the amendment if: 
 (a) the Commissioner is considering an application for dismissal 
of the opposition under Part 5.4; or 
 (b) for an opposition begun under subregulation 5.4(1): 
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OPC50135 - 18/02/2013 5:04:48 PM  (i) the applicant’s complete specification is being 
re-examined; and 
 (ii) the re-examination is not completed as required by 
regulation 9.5. 
 (4) The Commissioner must make the amendment if: 
 (a) subregulation (3) does not apply; and 
 (b) the Commissioner is satisfied that the amendment should be 
made. 
 (5) The Commissioner must, as soon as practicable: 
 (a) notify the parties of the Commissioner’s decision; and  
 (b) if the Commissioner decides to make the amendment —give 
the applicant a copy of the amended statement. 
Part 5.4 —Dismissal of opposition 
   
5.17  Dismissal on request 
 (1) An applicant may request the Commissioner to dismiss an 
opposition: 
 (a) within one month from the day the Commissioner gives the 
applicant a copy of the statement of grounds and particulars 
under subregulation 5.5(3), 5.6(3) or 5.11(3); or 
 (b) if the applicant’s complete specification is re-examined under 
subsection 97(1) of the Act —within one month from the day 
the re-examination is completed as required by 
regulation 9.5. 
 (2) The request must be in the approved form. 
 (3) The Commissioner must give the opponent a copy of the request as 
soon as practicable. 
 (4) If the Commissioner decides to dismiss the opposition, the 
Commissioner must, as soon as practicable, notify the parties of the 
decision. 
Note: For the requirements the Commissioner must satisfy when exercising 
a discretionary power adversely to a person, see regulation 22.22. 
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OPC50135 - 18/02/2013 5:04:48 PM 5.18  Dismissal on initiative of Commissioner 
 (1) The Commissioner may dismiss an opposition if the Commissioner 
considers it appropriate to do so. 
 (2) The grounds on which the Commissioner may dismiss the 
opposition include an opponent’s failure to file a statement of 
grounds and particulars or document mentioned in the statement in 
accordance with regulation 5.5, 5.6 or 5.11. 
 (3) If the Commissioner decides to dismiss the opposition, the 
Commissioner must notify the parties of the decision as soon as 
practicable. 
Note: For the requirements the Commissioner must satisfy when exercising 
a discretionary power adversely to a person, see regulation 22.22. 
Part 5.5 —Hearing of opposition 
   
5.19  Hearing and decision —re-examination 
 (1) This regulation applies to an opposition if: 
 (a) the applicant’s complete specification is re -examined under 
subsection 97(1) of the Act; and 
 (b) the re-examination is completed as required by 
regulation 9.5. 
 (2) The Commissioner may hear and decide the opposition: 
 (a) on the Commissioner’s own initiative, if the Commissioner 
considers it appropriate to do so; or 
  (b) at the opponent’s request, if the request is made:  
 (i) less than one month after the re-examination is 
compl
eted as required by regulation 9.5; and 
 (ii) in the approved form. 
 (3) The Commissioner must give the applicant a copy of a request 
under paragraph (2)(b) as soon as practicable. 
 (4) The Commissioner must notify the parties of the decision as soon 
as practicable. 
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OPC50135 - 18/02/2013 5:04:48 PM 5.20  Hearing and decision —other circumstances  
 (1) This regulation applies to an opposition if: 
 (a) the periods for filing evidence have ended; and 
 (b) the notice of opposition has not been withdrawn under 
regulation 5.26; and 
 (c) the opposition has not been dismissed under Part 5.4 or heard 
and decided under regulation 5.19. 
 (2) The Commissioner: 
 (a) must hold a hearing of the opposition if requested by a party 
in writing; or 
 (b) may decide, on the Commissioner’s own initiative, to hold a 
hearing of the opposition. 
 (3) The hearing may, at the Commissioner’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (4) If the Commissioner decides on an oral hearing: 
 (a) the Commissioner must notify the parties of the date, time 
and place of the hearing; and 
 (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing; and 
 (d) the Commissioner must give a copy of each party’s summary 
of submissions to the other party as soon as practicable. 
 (5) The Commissioner must: 
 (a) decide the opposition; and 
 (b) notify the parties of the Commissioner’s decisi on. 
 (6) The Commissioner, in making an award of costs in relation to an 
opposition under subregulation 22.8(2), may consider a failure by a 
party to file a summary of submissions under subregulation (4). 
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OPC50135 - 18/02/2013 5:04:48 PM Part 5.6 —Miscellaneous 
   
5.21  Opposition to amendment —grounds 
  For subsection 104(4) of the Act, an opposition to an amendment 
ma
y be made only on the ground that the amendment is not 
allowable under: 
 (a) section 102 of the Act; or 
 (b) regulation 10.3. 
Note: For the period for filing a notice of opposition to the allowance of an 
amendment, see subregulation 5.10(1). 
5.22  Commissioner may give directions 
 (1) The Commissioner may give a direction in relation to an 
opposition to which this Chapter applies: 
 (a) if requested by a party in writing; or 
 (b) on the Commissioner’s own initiative.  
 (2) If the Commissioner proposes to give a direction, the 
Commissioner must give the parties an opportunity to make 
representations about the direction. 
 (3) A direction must not be inconsistent with the Act or th ese 
Regulations. 
 (4) The Commissioner must notify the parties of the direction as soon 
as practicable. 
5.23  Commissioner may consult documents 
 (1) For the purposes of deciding an opposition, the Commissioner may 
consult a document that: 
 (a) is relevant to the opposition; and 
 (b) has not been filed under this Chapter; and 
 (c) is available in the Patent Office. 
 (2) If the Commissioner proposes to rely on the document, the 
Commissioner must give the parties: 
 (a) notice of the Commissioner’s intention t o do so; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) a copy of, or access to, the document; and 
 (c) an opportunity to give evidence or make representations 
about the document. 
5.24  Representations to Commissioner —formal requirements 
  A representation mentioned in a provision of this Chapter may be 
made to the Commissioner by any means approved by the 
Commissioner. 
5.25  Extension of time for filing —amendment at Commissioner’s 
direction 
 (1) This regulation applies if: 
 (a) the Commissioner directs an applicant to file a statement of 
proposed amendments under subsection 107(1) of the Act; 
and 
 (b) a period for filing a document under this Chapter begins or 
ends during the amendment period. 
 (2) The period for filing the document is extended by the equivalent of 
the amendment period. 
 (3) In this regulation: 
amendment period means the period that: 
 (a) begins on the day the applicant is given an opportunity to be 
heard under subsection 107(2) of the Act; and 
 (b) ends on the day the Commissioner decides whether to allow 
the amendment. 
5.26  Withdrawal of opposition 
 (1) An opponent may withdraw an opposition at any time by filing a 
signed notice of withdrawal in the approved form. 
 (2) The Commissioner must give the applicant a copy of the notice of 
withdrawal as soon as practicable. 
3  Chapt er 6A 
Repeal the Chapter, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM Chapter 6A —Divisional applications 
   
   
6A.1  Divisional applications before grant —standard and innovation 
patents  
 (1) For paragraph 79B(2)(a) and subparagraph 79B(3)(b)(iv) of the 
Act, a further complete application must: 
 (a) be made in accordance with section 29 of the Act; and 
 (b) be filed: 
 (i) if the first application is for a standard patent —no later 
than 3 months from the day the notice of acceptance of 
the first application is published under 
paragraph 49(5)(b) of the Act; or 
 (ii) if the first application is for an innovation patent —
before the grant of the patent under subsection 62(1) of 
the Act. 
Note: For the definition of first application , see section 79B of the Act. 
 (2) For paragraph 79B(2)(b) of the Act, the particulars are: 
 (a) a statement that the application is a further complete 
application for section 79B of the Act; and 
 (b) the number of the first application. 
6A.2  Divisional applications after grant —innovation patents 
 (1) For paragraph 79C(1A)(a) and subparagraph 79C(2)(b)(iv) of the 
Act, a further complete application must be: 
 (a) made in accordance with section 29 of the Act; and 
 (b) filed no later than one month from the day the notice of the 
occurrence of the examination of the first patent is published 
under paragraph 101E(2)(b) of the Act. 
Note: For the definition of first patent , see section 79C of the Act. 
 (2) For paragraph 79C(1A)(b) of the Act, the particulars are: 
 (a) a statement that the application is a further complete 
application for section 79C of the Act; and 
 (b) the number of the first patent. 
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OPC50135 - 18/02/2013 5:04:48 PM 4  Subregulations 13.1A(1) and 13.1B(1) 
Omit “ subsection 141(1) ”, substitute “ paragraph 141(1)(c) ”. 
5  Subregulation 22.10(3) 
Repeal the subregulation. 
6  Regulation 22.10AC 
Repeal the regulation, substitute: 
22.10AC  
Prescribed acts 
  For subsection 222A(7) of the Act, the following are prescribed: 
 (a)
 lodging a return under section 76A of the Act; 
 (b) an act done in relation to proceedings in a court or a tribunal; 
 (c) an act done under Chapter 20. 
7  Subregulation 22.11(4) 
R
epeal the subregulation, substitute: 
 (4) For the definition of relevant act  in subsection 223(11) of the Act, 
t
he following are prescribed: 
 (a) an action mentioned in Chapter 5, other than an action or step 
taken under regulation 5.4, 5.5, 5.10 or 5.11; 
 (b) filing, during the term of a standard patent under 
subsection 71(2) of the Act, an application under 
subsection 70(1) of the Act for an extension of the term of 
the patent; 
 (c) an action mentioned in Chapter 20. 
8  Subregulations 22.21(3) and (4) 
Repeal the subregulations, substitute: 
 (3) The Commissioner must give a copy of the application to: 
 (a) a person whose application was restored under section 150 of 
the Act; or 
 (b) a patent applicant or patentee of the application or patent for 
which an extension of time was granted under section 223 of 
the Act; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) the patent applicant or patentee of the application or patent to 
which subsection 41(4) of the Act applies; 
and to any other person the Commissioner believes to have an 
interest in the application. 
 (4) A person mentioned in subregulation (3) may oppose the grant of 
the licence to which the application relates. 
9  Part 2 of Schedule 7 (table items 216 to 220) 
Repeal the items, substitute: 
216 Filing a notice of opposition under regulation  5.4, 
5.6 or 5.10  $600  
217 Filing a request under subregulation 5.17(1) for 
dismissal of opposition  $600  
218 Filing an application under subregulation 5.9(1) 
for an extension  of time  $500  for each month 
or part of a month for 
which the extension 
is sought  
219 Making a representation to the Commissioner, 
under subregulation 5.14(2) or 5.15(3) or 
paragraph  5.16(2)(b), objecting to a proposed 
amendment  $600  
220 Making a representation to the Commissioner 
under subregulation 5.22(2) objecting to a 
proposed direction  $600  
Trade Marks Regulations 1995 
10  After regulation 2.2 
Insert: 
2.3  Giving of documents by Registrar 
 (1) In these Regulations, the Registrar may give a document to a 
person by: 
 (a) making the document available to the person in an electronic 
form; and 
 (b) notifying the person that the document is available. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) If the Registrar gives a document to a person, the document is 
taken to have been given to the person on the day the document is 
dated by the Registrar. 
11  Part 5 
Repeal the Part, substitute: 
Part 5 —Opposition to registration 
Division 1 —Preliminary 
5.1  What Part 5 is about 
 
 This Part sets out requirements for the following: 
 (a) the filing of notices of opposition and associated documents; 
 (b) the amending of filed documents; 
 (c) the dismissal of an opposition; 
 (d) a cooling-off period for an opposition; 
 (e) the hearing of an opposition; 
 (f) associated matters. 
5.2  Definitions 
  In this Part: 
notice of intention to defend means a notice filed under 
regulation 5.13. 
notice of intention to oppose  means a notice filed under 
regulation 5.6. 
notice of opposition  means: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
party  means an applicant or opponent. 
statement of grounds and particulars means a statement by an 
opponent that sets out: 
 (a) the grounds on which the opponent intends to rely; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) the facts and circumstances forming the basis for the 
grounds. 
trade mark application  means an application for registration of a 
trade mark under section 27 of the Act. 
Note: The following terms are defined in section 6 of the Act: 
(a) applicant; 
(b) approved form; 
(c) employee; 
(d)
 file; 
(e) month; 
(f) opponent; 
(g) person. 
5.3  Registrar may give direction about filing document or evidence 
 (1) If a document or evidence may or must be filed under this Part, the 
Registrar may give a direction specifying: 
 (a) how many copies of the document or evidence must be filed; 
and 
 (b) the form in which the document or evidence is to be filed ; 
and 
 (c) the means by which the document or evidence is to be filed. 
 (2) If a party does not comply with the direction, the Registrar may: 
 (a) treat the document or evidence as not having been filed; or 
 (b) tell the party to comply with the direction. 
 (3) The Registrar may make or revoke the direction as the Registrar 
sees fit. 
 (4) Regulation 5.4 does not apply to the Registrar’s decision to make 
or revoke the direction. 
5.4  Notification and opportunity to make representations 
 (1) This regulation applies if: 
 (a) a party makes a request to the Registrar under this Part; or 
 (b) the Registrar proposes to make a decision on the Registrar’s 
own initiative under this Part. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) The Registrar must: 
 (a) for paragraph (1)(a) —notify the other party of the request, 
including by giving the other party a copy of the request; or 
 (b) for paragraph (1)(b) —notify the parties of the proposed 
decision.  
 (3) If the Registrar proposes to grant the request, the Registrar must 
give the parties an opportunity to make representations: 
 (a) in writing; or 
 (b) at a hearing; or 
 (c) by other means that the Registrar states in the notification. 
 (4) The Registrar must notify the parties of the decision. 
Division 2 —Filing of opposition documents 
Subdivision A —Notice of opposition 
5.5  Filing of notice of opposition 
  A notice of opposition is taken to be filed when the notice of 
intention to oppose and the statement of grounds and particulars 
have been filed under regulations 5.6 and 5.7. 
5.6  Filing of notice of intention to oppose 
 (1) For subsection 52(2) of the Act, the period for filing a notice of 
intention to oppose is 2 months from the day the acceptance of the 
trade mark application is advertised in the Official Journal  under 
paragraph 34(b) of the Act. 
 (2) The notice must be in an approved form. 
 (3) The Registrar must give a copy of the notice to the applicant. 
5.7  Filing of statement of grounds and particulars 
 (1) A statement of grounds and particulars must be filed within one 
month from the day the notice of intention to oppose is filed. 
 (2) The statement must be in an approved form. 
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OPC50135 - 18/02/2013 5:04:48 PM 5.8  Statement of grounds and particulars must be adequate 
 (1) The Registrar must assess the adequacy of a statement of grounds 
and particulars. 
 (2) If the Registrar decides that the statement is adequate, the Registrar 
must give a copy of the statement to the applicant. 
 (3) If the Registrar decides that the statement is inadequate: 
 (a) the Registrar may direct the opponent to rectify the 
inadequacy by filing more information on the basis for one or 
more of the grounds; or 
 (b) if all the grounds are inadequately particularised, the 
Registrar may dismiss the opposition; or 
 (c) if only some of the grounds are inadequately particularised, 
the Registrar may: 
 (i) delete from the statement some or all of the material that 
is inadequate; and 
 (ii) treat the result as the statement for the purposes of these 
Regulations; and 
 (iii) give a copy of the amended statement to the opponent. 
 (4) If the Registrar decides that the statement is still inadequate after 
the information is filed under paragraph (3)(a): 
 (a) the Registrar may dismiss the opposition; or 
 (b) the Registrar may: 
 (i) delete from the statement some or all of the material that 
is inadequate; and 
 (ii) treat the result as the statement for the purposes of these 
Regulations; and 
 (i
ii) give a copy of the amended statement to the opponent. 
 (5) If the Registrar decides that the information filed under 
paragraph (3)(a) rectifies the inadequacy of the statement, the 
Registrar must give a copy of the statement and the information 
filed in relation to paragraph (3)(a) to the applicant. 
 (
6) The opponent may apply to the Administrative Appeals Tribunal 
for review of a decision under this regulation to dismiss the 
opposition or delete material from the statement of grounds and 
particulars. 
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OPC50135 - 18/02/2013 5:04:48 PM  (7) Regulation 5.4 does not apply to this regulation. 
5.9  Extension of time for filing —application 
 (1) A person who intends to oppose an application under 
subsection 52(1) of the Act may request the Registrar to extend: 
 (a) the period for filing a notice of intention to oppose under 
subregulation 5.6(1); or 
 (b) the period for filing a statement of grounds and particulars 
under subregulation 5.7(1). 
 (2) A request under paragraph (1)(a) or (b) may be made: 
 (a) within the period for filing the document in question; or 
 (b) before the trade mark is entered on the Register under 
section 69 of the Act. 
Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the 
consequences of making the request after the filing period has ended. 
 (3) The request must: 
 (a) be in an approved form; and 
 (b) be accompanied by a declaration stating: 
 (i) the facts and circumstances forming the basis for the 
grounds; and 
 (ii) if the period for filing the notice or the statement of 
grounds and particulars has ended —the reason why the 
request was not made within the period. 
Note: Regulations 21.6 and 21.7 deal with making and filing declarations. 
 (4) The request may be made only on either or both of the following 
grounds: 
 (a) an error or omission by the person, the person’s agent, the 
Registrar or an employee; 
 (b) circumstances beyond the control of the person, other than an 
error or omission by the person, the person’s agent, the 
Registrar or an employee. 
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OPC50135 - 18/02/2013 5:04:48 PM 5.10  Extension of time for filing —grant 
 (1) The Registrar may grant a request under subregulation 5.9(1) for 
an extension of time only if the Registrar is satisfied that the 
grounds set out in the request justify the extension. 
 (2) However, if the request is made after the period for filing the 
notice or statement of grounds and particulars has ended, the 
Registrar must not grant the extension unless the Registrar is 
satisfied that there is sufficient reason for the delay in making the 
request. 
 (3) The Registrar must decide the length of the extended period having 
regard to what is reasonable in the circumstance s. 
5.11  Amendment of notice of intention to oppose 
 (1) An opponent may request the Registrar to amend a notice of 
intention to oppose to correct a clerical error or obvious mistake. 
 (2) If an opposition is proceeding in the name of another person (the 
new opponent ) under section 53 of the Act, the new opponent may 
request the Registrar to amend the notice of intention to oppose to 
record the new opponent’s name.  
 (3) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended notice of intention to oppose to the applicant. 
 (5) Regulation 5.4 does not apply to a request under subregulation (1) 
or (2). 
5.12  Amendment of statement of grounds and particulars 
 (1) An opponent may request the Registrar to amend the statement of 
grounds and particulars to: 
 (a) correct an error or omission in the grounds of opposition or 
the facts and circumstances forming the basis for the 
grounds; or 
 (b) amend a ground of opposition; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) add a new ground of opposition; or 
 (d) to amend the facts and circumstances forming the basis for 
the grounds. 
 (2) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (3) However, the Registrar may grant a request to: 
 (a) amend a ground of opposition; or 
 (b) add a new ground of opposition; 
only if the Registrar is satisfied that the amendment or addition 
relates to information of which the opponent could not reasonably 
have been aware at the time of filing the statement. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended statement to the applicant. 
Subdivision B —Notice of intention to defend 
5.13  Filing of notice of intention to defend 
 (1) For subsection 52A(2) of the Act, a notice of intention to defend 
must be filed within one month from the day the applicant is given 
a copy of the statement of grounds and particulars. 
 (2) The Registrar must give a copy of the notice to the opponent. 
Subdivis ion C—Evidence 
5.14  Filing of evidence 
 (1) The Registrar must notify the parties that: 
  (a) all the evidence for an evidentiary period mentioned in this 
regulation has been filed; or 
 (b) no evidence was filed for the period. 
 (2) The Registrar must give a copy of any evidence filed by a party 
under this regulation to the other party: 
 (a) before the end of the relevant evidentiary period, if the 
Registrar considers it appropriate to do so; or 
 (b) after the evidentiary period ends. 
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OPC50135 - 18/02/2013 5:04:48 PM Evidence in support 
 (3) An opponent must file any evidence in support of the opposition 
within 3 months from the day the opponent is given a copy of the 
notice of intention to defend. 
Evidence in answer 
 (4) If the opponent files evidence in support of the opposition, the 
applicant must file any evidence in answer to the evidence in 
support within 3 months from the day the Registrar: 
 (a) gives the applicant: 
 (i) all the evidence in support; or 
 (ii) if the opponent files the evidence in support in 
instalments —the final instalment of the evidence in 
support; and 
 (b) notifies the applicant that all the evidence in support has been 
filed. 
 (5) If the opponent does not file any evidence in support of the 
opposition, the applicant must file any evidence in answer to the 
statement of grounds and particulars within 3 months from the day 
the Registrar notifies the applicant that no evidence in support was 
filed. 
Evidence in reply 
 (6) If the applicant files evidence in answer under subregulation (4) or 
(5), the opponent must file any evidence in reply to the evidence in 
answ
er within 2 months from the day the Registrar: 
 (a) gives the opponent: 
 (i) all the evidence in answer; or 
 (ii) if the applicant files the evidence in answer in 
instalments —the final instalment of the evidence in 
answer; and 
 (b) notifies the opponent that all the evidence in answer has been 
filed. 
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OPC50135 - 18/02/2013 5:04:48 PM 5.15  Extension of time for filing 
 (1) A party may request the Registrar to extend a period for filing 
evidence mentioned in regulation 5.14. 
 (2) The Registrar may extend the period only if the Registrar is 
satisfied that: 
 (a) the party: 
 (i) has made all reasonable efforts to comply with all 
relevant filing requirements of this Part; and 
 (ii) despite acting promptly and diligently at all times to 
ensure the filing of the evidence within the period, is 
unable to do so; or 
 (b) there are exceptional circumstances that justify the extension. 
 (3) The Registrar: 
 (a) must decide the length of the extended period having regard 
to what is reasonable in the circumstances; and 
 (b) may do so on terms that the Registrar considers appropriate. 
 (4) In this regulation: 
exceptional circumstances  includes the following: 
 (a)  a circumstance beyond the control of a party that prevents the 
party from complying with a filing requirement under this 
Part; 
 (b) an error or omission by the Registrar or an employee that 
prevents a party from complying with a filing requirement 
under this Part; 
 (c) an order of a court or a direction by the Registrar that the 
opposition be stayed. 
Division 3 —Cooling-off period for opposition 
5.16  Registrar may allow cooling-off period 
 (1) This regulation applies to an opposition if: 
 (a) the notice of opposition has been filed; and 
 (b) the Registrar has not made a decision on the opposition under 
subsection 55(1) of the Act; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) the opposition has not been dismissed under section 222 of 
the Act or regulation 5.8. 
 (
2) If the Registrar is satisfied that the parties agree to a cooling-off 
period, the Registrar must allow a cooling-off period of 6 months. 
 (3) The Registrar must extend the cooling-off period for 6 months if, 
before the end of the period, the Registrar is satisfied that the 
parties agree to the extension. 
 (4) The Registrar must not: 
 (a) further extend the cooling-off period; or 
 (b) allow more than one cooling-off period for an opposition. 
 (5) If a party files a notice, in an approved form, requesting the 
Registrar to discontinue the cooling-off period, the Registrar must 
do so. 
 (6) The Registrar may direct the parties on steps the parties must take: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (7) The opposition resumes: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (8) If: 
 (a) the cooling-off period begins during the period mentioned in 
regulation 5.13 or an evidentiary period mentioned in 
regulation 5.14; and 
 (b) the opposition resumes; 
the period mentioned in regulation 5.13 or 5.14 restarts when the 
opposition resumes. 
Division 4 —Hearing of opposition 
5.17  Hearing 
 (1) This regulation applies to an opposition if: 
 (a) the opposition has not: 
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OPC50135 - 18/02/2013 5:04:48 PM  (i) been dismissed under section 222 of the Act or 
paragraph 5.8(3)(b) or 5.8(4)(a); or 
 (ii) been decided under subsection 55(1) of the Act; and 
 (b) the trade mark application to which the opposition relates has 
not lapsed under section 54A of the Act. 
 (2) An applicant may request the Registrar to hold a hearing if: 
 (a) the evidentiary period mentioned in subregulation 5.14(3) has 
ended; and 
 (b) either: 
 (i) all evidence for the opposition proceeding has been 
filed; or 
 (ii) no evidence has been filed in that period. 
 (3) A party may request the Registrar to hold a hearing if: 
 (a) an evidentiary period mentioned in any of subregulations 
5.14(4) to (6) has ended; and 
 (b) either: 
 (i) all evidence for the opposition proceeding has been 
filed; or 
 (ii) no evidence has been filed in that period. 
 (4) The Registrar: 
 (a) must hold a hearing of the opposition if requested by a party; 
or 
 (b) may decide, on the Registrar’s own initiative, to hold a 
hearing of the opposition. 
 (5) The hearing may, at the Registrar’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (6) If the Registrar decides on an oral hearing: 
 (a) the Registrar must notify the parties of the date, time and 
place of the hearing; and 
 (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing. 
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OPC50135 - 18/02/2013 5:04:48 PM  (7) The Registrar may take into account a party’s failure to file a 
summary of submissions under subregulation (6) in making an 
award of costs. 
Note: Regulations 21.15 and 21.16 deal with hearings. 
Division 5 —Miscellaneous 
5.18  Copy of earlier Convention application to be available to 
opponent 
 (1) In opposition proceedings relating to an application in respect of 
which the applicant claims a right of priority, an opponent may 
request the Registrar for a copy of an earlier application to be made 
available. 
 (2) On receiving the request, the Registrar must require the applicant 
to file: 
 (a) a copy of the earlier application certified in the trade marks 
office (or its equivalent) of the Convention country in which 
it was filed; and 
 (b) if the earlier application is not in English: 
 (i) a translation of the earlier application into English; and 
 (ii) a certificate of verification relating to the translation. 
 (3) Subregulation (2) does not apply if the applicant has already filed 
the relevant documents. 
 (4) The Registrar must give a copy of the documents to the opponent. 
 (5) If the applicant is the successor in title to the person who made the 
earlier application, the Registrar may require the applicant to 
provide documentary evidence that is sufficient to establish the 
passing of title to the applicant. 
5.19  Registrar may give direction 
 (1) The Registrar may give a direction in relation to an opposition to 
which this Part applies: 
 (a) if requested by a party in writing; or 
 (b) on the Registrar’s own initiative.  
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OPC50135 - 18/02/2013 5:04:48 PM  (2) If the Registrar proposes to give a direction, the Registrar must 
give the parties an opportunity to make representations about the 
direction. 
 (3) A direction must not be inconsistent with the Act or these 
Regulations. 
 (4) The Registrar must notify the parties of the direction as soon as 
practicable. 
5.20  Registrar must notify parties of dismissal or discontinuance of 
opp
osition 
  If an opposition is dismissed under section 222 of the Act or 
regulation 5.8 or discontinued, the Registrar must notify the parties 
of the dismissal or discontinuance. 
12  Before regulation 6.1 
Insert: 
Division 1 —Amendment of application for registration of 
trade mark and other documents 
13  Regulations 6.5 and 6.6 
Repeal the regulations, substitute: 
Division 2 —Opposition to amendment after particulars 
published 
6.5  Definitions 
  In this Division: 
notice of opposition  means a notice filed under subregulation 
6.6(1). 
party means an applicant or opponent. 
Note: The following terms are defined in section 6 of the Act: 
(a) applicant; 
(b) approved form; 
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OPC50135 - 18/02/2013 5:04:48 PM (c) file; 
(d) month; 
(e) person. 
6.6  Notice of opposition 
 (1) For subsection 65A(4) of the Act, a person may oppose a request 
for amendment by filing a notice of opposition, in an approved 
form, within one month from the advertisement of the request for 
amendment in the Official Journal under subsection 65A(3) of the 
Act. 
 (2) The Registrar must give a copy of the notice to the applicant. 
6.7  Notification and opportunity to make representations 
 (1) This regulation applies if: 
 (a) a party makes a request to the Registrar under this Division; 
or 
 (b) the Registrar proposes to make a decision on the Registrar’s 
own initiative under this Division. 
 (2) The Registrar must: 
 (a) for paragraph (1)(a) —notify the other party of the request, 
including by giving the other party a copy of the request; or 
 (b) for paragraph (1)(b) —notify the parties of the proposed 
decision. 
 (3) If the Registrar proposes to grant the request, the Registrar must 
give the parties an opportunity to make representations: 
 (a) in writing; or 
 (b) at a hearing; or 
 (c) by other means that the Registrar states in the notification. 
 (4) The Registrar must notify the parties of the Registrar’s decision.  
6.8  Practice and procedure 
  The Registrar may: 
 (a) decide the practice and procedure to be followed in an 
opposition to which this Division applies; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) direct the parties accordingly. 
6.9  Hearing 
 (1) The Registrar: 
 (a) must hold a hearing of the opposition if requested by a party 
in writing; or 
 (b) may decide, on the Registrar’s own initiative, to hold a 
hearing of the opposition. 
 (2) The hearing may, at the Registrar’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (3) If the Registrar decides on an oral hearing: 
 (a) the Registrar must notify the parties of the date, time and 
place of the hearing; and 
 (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing. 
 (4) The Registrar may take into account a party’s failure to file a 
summary of submissions under subregulation (3) in making an 
award of costs. 
Note: Regulations 21.15 and 21.16 deal with hearings. 
 (5) The Registrar must: 
 (a) decide the opposition; and 
 (b) notify the parties of the Registrar’s decision.  
6.10  Registrar may give direction 
 (1) The Registrar may give a direction in relation to an opposition to 
which this Division applies: 
 (a) if requested by a party in writing; or 
 (b) on the Registrar’s own initiative.  
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OPC50135 - 18/02/2013 5:04:48 PM  (2) If the Registrar proposes to give a direction, the Registrar must 
give the parties an opportunity to make representations about the 
direction. 
 (3) A direction must not be inconsistent with the Act or these 
Regulations. 
 (4) The Registrar must notify the parties of the direction as soon as 
practicable. 
6.11  Registrar must notify parties of dismissal or discontinuance of 
opp
osition 
  If an opposition is dismissed or discontinued, the Registrar must 
notify the parties of the dismissal or discontinuance. 
14  Part 9 
Repeal the Part, substitute: 
Part 9 —Removal of trade mark from Register for 
non-use 
Division 1 —Preliminary 
9.1  What Part 9 is about 
 
 This Part sets out requirements for the following: 
 (a) the making and notification of an application for removal; 
 (b) the filing of notices of opposition and associated documents; 
 (c) the amending of filed documents; 
 (d) the dismissal of an opposition; 
 (e) the hearing of an opposition; 
 (f) associated matters. 
9.2  Definitions 
In this Part: 
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OPC50135 - 18/02/2013 5:04:48 PM application for removal  means an application for removal of a 
trade mark from the Register. 
notice of intention to defend means a notice filed under 
regulation 9.15. 
notice of intention to oppose  means a notice filed under 
regulation 9.8. 
notice of opposition  means: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
opponent means a person who files: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
party  means an applicant or opponent. 
statement of grounds and particulars means a statement by an 
opponent that sets out: 
 (a) the grounds for removal that the opponent intends to rebut; 
and 
 (b) the facts and circumstances that form the basis for the 
opposition to the removal. 
Note: The following terms are defined in section 6 of the Act: 
(a) applicant; 
(b) approved form; 
(c) employee; 
(d)
 file; 
(e) month; 
(f) person. 
9.3  Registrar may give direction about filing document or evidence 
 (1) If a document or evidence may or must be filed under this Part, the 
Registrar may give a direction specifying: 
 (a) how many copies of the document or evidence must be filed; 
and 
 (b) the form in which the document or evidence is to be filed; 
and 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) the means by which the document or evidence is to be filed. 
 (2) If a party does not comply with the direction, the Registrar may: 
 (a) treat the document or evidence as not having been filed; or 
 (b) tell the party to comply with the direction. 
 (3) The Registrar may make or revoke the direction as the Registrar 
sees fit. 
 (4) Regulation 9.4 does not apply to the Registrar’s decisi on to make 
or revoke the direction. 
9.4  Notification and opportunity to make representations 
 (1) This regulation applies if: 
 (a) a party makes a request to the Registrar under this Part; or 
 (b) the Registrar proposes to make a decision on the Registrar ’s 
own initiative under this Part. 
 (2) The Registrar must: 
 (a) for paragraph (1)(a) —notify the other party of the request, 
including by giving the other party a copy of the request; or 
 (b) for paragraph (1)(b) —notify the parties of the proposed 
decision. 
 (3) If the Registrar proposes to grant the request, the Registrar must 
give the parties an opportunity to make representations: 
 (a) in writing; or 
 (b) at a hearing; or 
 (c) by other means that the Registrar states in the notification. 
 (4) The Registr ar must notify the parties of the Registrar’s decision.  
Division 2 —Application for removal 
9.5  Application for removal 
  For paragraph 92(2)(a) of the Act, an application for removal must 
be in an approved form. 
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OPC50135 - 18/02/2013 5:04:48 PM 9.6  Notification of application 
  For subsection 95(1) of the Act, the Registrar must, within one 
mont
h from the filing of the application, give a copy of the 
application to each person who, in the Registrar’s opinion, should 
receive one. 
Division 3 —Filing of opposition documents 
Subdivision A —Notice of opposition 
9.7  Filing of notice of opposition 
  A notice of opposition is taken to be filed when the notice of 
intention to oppose and the statement of grounds and particulars 
have been filed under regulations 9.8 and 9.9. 
9.8  Filing of notice of intention to oppose 
 (
1) For subsection 96(2) of the Act, the period for filing a notice of 
intention to oppose is 2 months from the day the application for 
removal is advertised in the Official Journal . 
 (2) The notice must be in an approved form. 
 (3) The Registrar must give a copy of the notice to the applicant. 
9.9  Filing of statement of grounds and particulars 
 (1) A statement of grounds and particulars must be filed within one 
month from the day the notice of intention to oppose is filed. 
 (2) The statement must be in an approved form. 
9.10  Statement of grounds and particulars must be adequate 
 (1) The Registrar must assess the adequacy of a statement of grounds 
and particulars filed under regulation 9.9. 
 (
2) If the Registrar decides that the statement is adequate, the Registrar 
must give a copy of the statement to the applicant. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) If the Registrar decides that the statement is inadequate, the 
Registrar may: 
 (a) direct the opponent to rectify the inadequacy by filing more 
information on the basis for the opposition to the grounds for 
removal ; or 
 (b) dismiss the opposition. 
 (4) If the Registrar decides that the information filed under 
paragraph ( 3)(a) rectifies the inadequacy of the statement, the 
Registrar must give a copy of the statement and the information to 
the applicant. 
 (5) For subsection 99A(1) of the Act, the Registrar may dismiss the 
opposition if: 
 (a) the Registrar decides that the statement is inadequate; or 
 (b) the Registrar has directed the opponent to file information 
under paragraph (3)(a) and: 
 (i) the opponent fails to file the information; or 
 (ii) the Registrar decides that the information filed does not 
rectify the inadequacy of the statement. 
 (6) Regulation 9.4 does not apply to this regulation. 
Note: For review rights in relation to a decision by the Registrar to dismiss 
an opposition, see subsection 99A(2) of the Act. 
9.11  Extension of time for filing —application 
 (1) A person who intends to oppose an application for removal may 
request the Registrar to extend: 
 (a) the period for filing a notice of intention to oppose under 
subregulation 9.8(1); or 
 (b) the period for filing a statement of grounds and particulars 
under subregulation 9.9(1). 
 (2) A request under paragraph (1)(a) or (b) may be made within the 
period for filing the document in question. 
Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the 
consequences of making the request after the filing period has ended. 
 (3) The request must: 
 (a) be in an approved form; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) be accompanied by a declaration stating: 
 (i) the facts and circumstances forming the basis for the 
grounds; and 
 (ii) if the period for filing the notice of intention to oppose 
or the statement of grounds and particulars has ended —
the reason why the request was not made within the 
period. 
Note: Regulations 21.6 and 21.7 deal with making and filing declarations. 
 (4) The request may be made only on either or both of the following 
grounds: 
 (a) an error or omission by the person, the person’s agent, the 
Registrar or an employee; 
 (b) circumstances beyond the control of the person, other than an 
error or omission by the person, the person’s agent, the 
Registrar or an employee. 
9.12  Extension of time for filing —grant 
 (1) The Registrar may grant a request under subregulation 9.11(1) for 
an extension of time only if the Registrar is satisfied that the 
grounds set out in the request justify the extension. 
 (2) However, if the request is made after the period for filing the 
notice or statement of grounds and particulars has ended, the 
Registrar must not grant the extension unless the Registrar is 
satisfied that there is sufficient reason for the delay in making the 
request. 
 (3) The Registrar must decide the length of the extended period having 
regard to what is reasonable in the circumstances. 
9.13  Amendment of notice of intention to oppose 
 (1) An opponent may request the Registrar to amend a notice of 
intention to oppose to correct a clerical error or obvious mistake. 
 (2) If an opposition is proceeding in the name of a person other than 
the opponent under section 96A of the Act, the person may request 
the Registrar to amend the notice of intention to oppose to record 
the person’s name.  
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OPC50135 - 18/02/2013 5:04:48 PM  (3) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended notice of intention to oppose to the applicant. 
 (5) Regulation 9.4 does not apply to this regulation. 
9.14  Amendment of statement of grounds and particulars 
 (1) An opponent may request the Registrar to amend the statement of 
grounds and particulars to: 
 (a) correct an error or omission; or 
 (b) amend or add facts or circumstances that form the basis of 
the opposition to the removal. 
 (2) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (3) However, the Registrar may grant the request only if the Registrar 
is satisfied that the amendment should be made. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended statement to the applicant. 
Subdivision B —Notice of intention to defend 
9.15  Filing of notice of intention to defend 
 (1) A notice of intention to defend must be filed within one month 
from the day the applicant is given a copy of the statement of 
grounds and particulars. 
 (2) The Registrar must give the opponent a copy of the notice. 
 (3) If the applicant does not file the notice of intention to defend 
within the period mentioned in subregulation (1), the Registrar may 
decide to: 
 (a) take the opposition to have succeeded; and 
 (b) refuse to remove the trade mark from the Register. 
 (4) The Registrar must notify the parties of the Registrar’s decision.  
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OPC50135 - 18/02/2013 5:04:48 PM Subdivision C —Evidence 
9.16  Filing of evidence 
 (1) The Registrar must notify the parties that: 
 (a) all the evidence for an evidentiary period mentioned in this 
regulation has been filed; or 
 (b) no evidence was filed for the period. 
 (2) The Registrar must give a copy of any evidence filed by a party 
under this regulation to the other party: 
 (a) before the end of the relevant evidentiary period, if the 
Registrar considers it appropriate to do so; or 
 (b) after the evidentiary period ends. 
Evidence in support 
 (3) An opponent must file any evidence in support of the opposition 
within 3 months from the day the opponent is given a copy of the 
notice of intention to defend the application for removal. 
Evidence in answer 
 (4) If the opponent files evidence in support of the opposition, the 
applicant must file any evidence in answer to the opponent’s 
evidence within 3 months from the day the Registrar: 
 (a) gives the applicant: 
 (i) all the evidence in support; or 
 (ii) if the opponent files the evidence in support in 
instalments —the final instalment of the evidence in 
support; and 
 (b) notifies the applicant that all the evidence in support has been 
filed. 
 (5) If the opponent does not file any evidence in support of the 
opposition, regulation 9.17 applies. 
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OPC50135 - 18/02/2013 5:04:48 PM Evidence in reply 
 (6) If the applicant files evidence in answer under subregulation (4), 
the opponent must file any evidence in reply to the evidence in 
answer within 2 months from the day the Registrar: 
 (a) gives the opponent: 
 (i) all the evidence in answer; or 
 (ii) if the applicant files the evidence in answer in 
instalments —the final instalment of the evidence in 
answer; and 
 (b) notifies the opponent that all the evidence in answer has been 
filed. 
9.17  Request for hearing and circumstances in which opposition 
taken to have ended 
 (1)  If an opponent requests the Registrar, within the period for filing 
evidence in support mentioned in subregulation 9.16(3), to hear the 
opposi
tion, the Registrar must do so. 
 (2) The opposition is taken to have ended, but not to have been 
discontinued or dismissed, if the opponent does not: 
 (a) file evidence in support in accordance with subregulation 
9.16(3); or 
 (b) ask for a hearing under subregulation (1). 
 (3) The application for removal is taken to be unopposed if: 
 (a) the opposition is taken to have ended under subregulation 
(2); and 
 (b) the Registrar is satisfied that the application for removal is in 
order. 
Note 1: See section 97 of the Act in relation to what the Registrar must do if 
the application for removal is unopposed. 
Note 2: Regulations 21.15 and 21.16 deal with hearings. 
9.18  Extension of time for filing 
 (1) A party may request the Registrar to extend a period for filing 
evidence mentioned in regulation 9.16. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) The Registrar may extend the period only if the Registrar is 
satisfied that: 
 (a) the party: 
 (i) has made all reasonable efforts to comply with all 
relevant filing requirements of this Part; and 
 (ii) despite acting promptly and diligently at all times to 
ensure the filing of the evidence within the period, is 
unable to do so; or 
 (b) there are exceptional circumstances that justify the extension. 
 (3) The Registrar: 
 (a) must decide the length of the extended period having regard 
to what is reasonable in the circumstances; and 
 (b) may do so on terms that the Registrar considers appropriate. 
 (4) In this regulation: 
exceptional circumstances  includes the following: 
 (a)  a circumstance beyond the control of a party that prevents the 
party from complying with a filing requirement under this 
Part; 
 (b) an error or omission by the Registrar or an employee that 
prevents a party from complying with a filing requirement 
under this Part; 
 (c) an order of a court or a direction by the Registrar that the 
opposition be stayed. 
Division 4 —Cooling-off period for opposition 
9.19  Registrar may allow cooling-off period 
 (1) This regulation applies to an opposition if: 
 (a) the notice of opposition has been filed; and 
 (b) the Registrar has not decided to remove the trade mark under 
subsection 101(1) of the Act; and 
 (c) the opposition has not been dismissed under regulation 9.10. 
 (2) If the Registrar is satisfied that the parties agree to a cooling-off 
period, the Registrar must allow a cooling-off period of 6 months. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) The Registrar must extend the cooling-off period for 6 months if, 
before the end of the period, the Registrar is satisfied that the 
parties agree to the extension. 
 (4) The Registrar must not: 
 (a) further extend the cooling-off period; or 
 (b) allow more than one cooling-off period for an opposition. 
 (5) If a party files a notice, in an approved form, requesting the 
Registrar to discontinue the cooling-off period, the Registrar must 
do so. 
 (6) The Registrar may direct the parties on steps the parties must take: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (7) The opposition resumes: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (8) If: 
 (a) the cooling-off period begins during the period mentioned in 
regulation 9.15 or an evidentiary period mentioned in 
regulation 9.16; and 
 (b) the opposition resumes; 
the period mentioned in regulation 9.15 or 9.16 restarts when the 
opposition resumes. 
Division 5 —Hearing of opposition 
9.20  Hearing 
 (1) This regulation applies to an opposition if the opposition has not 
been dismissed under regulation 9.10 or discontinued. 
 (
2) A party may request the Registrar to hold a hearing if an 
evidentiary period mentioned in regulation 9.16 has ended; and 
either 
 (a) all evidence for the opposition proceeding has been filed; or 
 (b) no evidence has been filed in that period. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) The Registrar: 
 (a) must hold a hearing of the opposition if requested by a party 
in writing; or 
 (b) may decide, on the Registrar’s own initiative, to hold a 
hearing of the opposition. 
 (4) The hearing may, at the Registrar’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (5) If the Registrar decides on an oral hearing: 
 (a) the Registrar must notify the parties of the date, time and 
place of the hearing; and 
 (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing. 
 (6) The Registrar may take into account a party’s failure t o file a 
summary of submissions under subregulation (5) in making an 
award of costs. 
Note: Regulations 21.15 and 21.16 deal with hearings. 
Division 6 —Miscellaneous 
9.21  Registrar may give direction 
 (1) The Registrar may give a direction in relation to an opposition to 
which this Division applies: 
 (a) if requested by a party in writing; or 
 (b) on the Registrar’s own initiative.  
 (2) If the Registrar proposes to give a direction, the Registrar must 
give the parties an opportunity to make representations about the 
direction. 
 (3) A direction must not be inconsistent with the Act or these 
Regulations. 
 (4) The Registrar must notify the parties of the direction as soon as 
practicable. 
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OPC50135 - 18/02/2013 5:04:48 PM 9.22  Registrar must notify parties of dismissal or discontinuance of 
opp
osition 
  If an opposition is dismissed under regulation 9.10 or discontinued, 
the Registrar must notify the parties of the dismissal or 
discontinuance. 
9.23  Removal of trade mark from register 
  If the Registrar dismisses the opposition under regulation 9.10, the 
Registrar must remove the trade mark from the Register in respect 
of the goods, services, or both, specified in the application for 
removal. 
15  At the end of regulation 17A.28 
Add: 
 (3) The ground set out in section 177 of the Act is a ground for 
rejecting an IRDA that is for a certification trade mark. 
16  Subdivision 3 of Division 3 of Part 17A 
Repeal the Subdivision, substitute: 
Subdivision C —Opposition to IRDA 
17A.29  Definitions 
  In this Subdivision: 
extension of protection  means the extension of protection in 
Australia to the trade mark that is the subject of the IRDA. 
notice of intention to defend means a notice filed under 
regulation 17A.34H. 
notice of intention to oppose  means a notice filed under 
regulation 17A.33. 
notice of opposition  means: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
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OPC50135 - 18/02/2013 5:04:48 PM opponent means a person who files: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
party  means an IRDA holder or opponent. 
statement of grounds and particulars means a statement by an 
opponent that sets out: 
 (a) the grounds on which the opponent intends to rely; and 
 (b) the facts and circumstances forming the basis for the 
grounds. 
Note: The following terms are defined in section 6 of the Act: 
(a) applicant; 
(b) approved form; 
(c) employee; 
(d) file; 
(e) month; 
(f) person. 
17A.30   Registrar may give direction about filing document or 
evidence 
 (1) If a document or evidence may or must be filed under this 
Subdivision, the Registrar may give a direction specifying: 
 (a) how many copies of the document or evidence must be filed; 
and 
 (b) the form in which the document or evidence is to be filed; 
and 
 (c) the means by which the document or evidence is to be filed. 
 (2) If a party does not comply with the direction, the Registrar may: 
 (a) treat the document or evidence as not having been filed; or 
 (b) tell the party to comply with the direction. 
 (3) The Registrar may make or revoke the direction as the Registrar 
sees fit. 
 (4) Regulation 17A.31 does not apply to this regulation. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.31   Notification and opportunity to make representations 
 (1) This regulation applies if: 
 (a) a party makes a request to the Registrar under this 
Subdivision; or 
 (b) the Registrar proposes to make a decision on the Registrar’s 
own initiative under this Subdivision. 
 (2) The Registrar must: 
 (a) for paragraph (1)(a) —notify the other party of the request, 
including by giving the other party a copy of the request; or 
 (b) for paragraph (1)(b) —notify the parties of the proposed 
decision. 
 (3) If the Registrar proposes to grant the request, the Registrar must 
give the parties an opportunity to make representations: 
 (a) in writing; or 
 (b) at a hearing; or 
 (c) by other means that the Registrar states in the notification. 
 (4) The Registrar must notify the parties of the Registrar’s decision.  
17A.32   Filing of notice of opposition 
 (1) A notice of opposition is taken to be filed when the notice o f 
intention to oppose and the statement of grounds and particulars 
have been filed under regulations 17A.33 and 17A.34A. 
 (2) The Registrar must notify the International Bureau of the filing of 
the notice of opposition in accordance with rule 17, as applicable, 
of the Common Regulations. 
17A.33   Filing of notice of intention to oppose 
 (1) If the Registrar advertises the acceptance of an IRDA in the 
Official Journal , a person may oppose the extension of protection 
by filing a notice of intention to oppose within 2 months from the 
advertisement of the acceptance. 
 (2) The notice must be in an approved form. 
 (3) The Registrar must give a copy of the notice to the applicant. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.34  Grounds for opposing IRDA 
 (1) The extension of protection may be opposed on any of the grounds 
on which an IRDA may be rejected under Subdivision 2, except the 
ground that the trade mark cannot be represented graphically. 
 (2) The extension of protection may also be opposed on any of the 
grounds set out in sections 58 to 61 and 62A of the Act, as affected 
by subregulation (3). 
 (3) Sections 58 to 61 and 62A of the Act apply in relation to an IRDA 
as if: 
 (a) a reference in those sections: 
 (i) to an application for the registration of a trade mark 
were a reference to the IRDA; and 
 (ii) to an applicant were a reference to the holder of the 
IRDA; and 
 (iii) to the registration of a trade mark were a reference to 
the extension of protection in Australia to the trade 
mark that is the subject of the IRDA; and 
 (b) the reference in paragraph 60(a) of the Act to the priority date 
for the registration of the trade mark were a reference to the 
priority date for the trade mark that is the subject of the 
IRDA. 
 (4) The extension of protection may also be opposed on the grounds 
that: 
 (a) a document filed in support of the IRDA was amended 
contrary to the Act; or 
 (b) the Registrar accepted the IRDA on the basis of evidence 
provided, or a representation made, by the holder that was 
false in a material particular. 
Note: Section 66 of the Act provides for the amendment of documents filed 
with the Registrar. 
17A.34A  Filing of statement of grounds and particulars 
 (1) A statement of grounds and particulars must be filed within one 
month from the day the notice of intention to oppose is filed. 
 (2) The statement must be in an approved form. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.34B  Statement of grounds and particulars must be adequate 
 (1) The Registrar must assess the adequacy of a statement of grounds 
and particulars. 
 (2) If the Registrar decides that the statement is adequate, the Registrar 
must give a copy of the statement to the applicant. 
 (3) If the Registrar decides that the statement is inadequate: 
 (a) the Registrar may direct the opponent to rectify the 
inadequacy by filing more information on the basis for one or 
more of the grounds; or 
 (b) if all the grounds are inadequately particularised, the 
Registrar may dismiss the opposition: or 
 (c) if only some of the grounds are inadequately particularised, 
the Registrar may: 
 (i) delete from the statement some or all of the material that 
is inadequate; and 
 (ii) treat the result as the statement for the purposes of these 
Regulations; and 
 (iii) give a copy of the amended statement to the opponent. 
 (4) If the Registrar decides that the statement is still inadequate after 
the information is filed under paragraph (3)(a): 
 (a) the Registrar may dismiss the opposition; or 
 (b) the Registrar may: 
 (i) delete from the statement some or all of the material that 
is inadequate; and 
 (ii) treat the result as the statement for the purposes of these 
Regulations; and 
 (iii) give a copy of the amended statement to the opponent. 
 (5) If the Registrar decides that the information filed under 
paragraph (3)(a) rectifies the inadequacy of the statement, the 
Registrar must give a copy of the statement and the information 
filed in relation to paragraph (3)(a) to the applicant. 
 (
6) The opponent may apply to the Administrative Appeals Tribunal 
for review of a decision under this regulation to dismiss the 
opposition or delete material from the statement of grounds and 
particulars. 
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OPC50135 - 18/02/2013 5:04:48 PM  (7) Regulation 17A.31 does not apply to this regulation. 
17A.34C  Extension of time for filing —application 
 (1) A person who intends to oppose the extension of protection may 
request the Registrar to extend: 
 (a) the period for filing a notice of intention to oppose under 
subregulation 17A.33(1); or 
 (b) the period for filing a statement of grounds and particulars 
under subregulation 17A.34A(1). 
 (2) A request under paragraph (1)(a) or (b) may be made: 
 (a) within the period for filing the document in question; or 
 (b) before the extension of protection of the IRDA is entered on 
the Record of International Registrations under 
paragraph 17A.37(1)(b). 
Note: See subparagraph (3)(b)(ii) and subregulation 17A.34D(2) in relation 
to the consequences of making the request after the filing period has 
ended. 
 (3) The request must: 
 (a) be in an approved form; and 
 (b) be accompanied by a declaration stating: 
 (i) the facts and circumstances forming the basis for the 
grounds; and 
 (ii) if the period for filing the notice or the statement of 
grounds and particulars has ended —the reason why the 
request was not made within the period. 
Note: Regulations 21.6 and 21.7 deal with making and filing declarations. 
 (4) The request must be made only on either or both of the following 
grounds: 
 (a) an error or omission by the person, the person’s agent, the 
Registrar or an employee; 
 (b) circumstances beyond the control of the person, other than an 
error or omission by the person, the person’s agent, the 
Registrar or an employee. 
 (5) Subsection 52(5) of the Act applies to the request. 
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OPC50135 - 18/02/2013 5:04:48 PM  (6) Regulation 17A.31 does not apply to this regulation. 
17A.34D  Extension of time for filing —grant 
 (1) The Registrar may grant a request under subregulation 17A.34C(1) 
for an extension of time if the Registrar is satisfied that the grounds 
set out in the request justify the extension. 
 (2) However, if the request is made after the period for filing the 
notice or statement of grounds and particulars has ended, the 
Registrar must not grant the extension unless the Registrar is 
satisfied that there is sufficient reason for the delay in making the 
request. 
 (3) The Registrar must decide the length of the extended period having 
regard to what is reasonable in the circumstances. 
17A.34E  Opposition may proceed in name of other person 
  Section 53 of the Act applies to a notice of intention to oppose 
filed under this Subdivision. 
17A.34F  Amendment of notice of intention to oppose 
 (1) An opponent may request the Registrar to amend a notice of 
intention to oppose to correct a clerical error or obvious mistake. 
 (2) If an opposition proceeds in the name of another person under 
section 53 of the Act, the person may request the Registrar to 
amend the notice o f intention to oppose to record the person’s 
name. 
 (3) The Registrar may grant a request under subregulation (1) or  (2) on 
terms that the Registrar considers appropriate. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the notice of the amended intention to oppose to the IRDA 
holder. 
 (5) Regulation 17A.31 does not apply to this regulation. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.34G  Amendment of statement of grounds and particulars 
 (1) An opponent may request the Registrar to amend the statement of 
grounds and particulars to: 
 (a) correct an error or omission in the grounds of opposition or 
the facts and circumstances forming the basis for the 
grounds; or 
 (b) amend a ground of opposition; or 
 (c) add a new ground of opposition; or 
 (d) to amend the facts and circumstances forming the basis for 
the grounds. 
 (2) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (3) However, the Registrar may grant a request to: 
 (a) amend a ground of opposition; or 
 (b) add a new ground of opposition; 
only if the Registrar is satisfied that the amendment or addition 
relates to information of which the opponent could not reasonably 
have been aware at the time of filing the statement. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended statement to the IRDA holder. 
17A.34H  Filing of notice of intention to defend 
 (1) The IRDA holder must file a notice of intention to defend within 
one month from the day the Registrar notifies the International 
Bureau under subregulation 17A.32(2). 
 (2) The holder must file an Australian address for service with the 
notice. 
 (3) The Registrar must give a copy of the notice to the opponent. 
 (4) If the holder does not file the notice within the period mentioned in 
subregulation (1), the Registrar may decide to: 
 (a) take the opposition to have succeeded; and 
 (b) refuse protection to the holder. 
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OPC50135 - 18/02/2013 5:04:48 PM  (5) The Registrar is not required to take any action in response to a 
notice of intention to defend filed under subregulation (1) unle ss 
the opponent has notified the Registrar, in writing, of the 
opponent’s address for service in Australia.  
 (6) A requirement to: 
 (a) give a document to a person; or 
 (b) give a person an opportunity to make written representations 
or to be heard; 
does not apply if no address for service of the person is recorded in 
the Record of International Registrations. 
 (7) The Registrar must notify the parties of the Registrar’s decision.  
17A.34J   Filing of evidence 
 (1) The Registrar must notify the parties that: 
 (a) all the evidence for an evidentiary period mentioned in this 
regulation has been filed; or 
 (b) no evidence was filed for the period. 
 (2) The Registrar must give a copy of any evidence filed by a party 
under this regulation to the other party: 
 (a) before the end of the relevant evidentiary period, if the 
Registrar considers it appropriate to do so; or 
 (b) after the evidentiary period ends. 
Evidence in support 
 (3) An opponent must file any evidence in support of the opposition 
within 3 months from the day the opponent is given a copy of the 
notice of intention to defend. 
Evidence in answer 
 (4) If the opponent files evidence in support of the opposition, the 
IRDA holder must file any evidence in answer to the evidence in 
support within 3 months from the day the Registrar: 
 (a) gives the IRDA holder: 
 (i) all the evidence in support; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) if the opponent files the evidence in support in 
instalments —the final instalment of the evidence in 
support; and 
 (b) notifies the IRDA holder that all the evidence in support has 
been filed. 
 (5) If the opponent does not file any evidence in support of the 
opposition, the IRDA holder must file any evidence in answer to 
the statement of grounds and particulars within 3 months from the 
day the Registrar notifies the IRDA holder that no evidence in 
support was filed. 
Evidence in reply 
 (6) If the IRDA holder files evidence in answer under subregulation 
(4) or (5), the opponent must file any evidence in reply to the 
evidence in answer within 2 months from the day the Registrar: 
  (a) gives the opponent: 
 (i) all the evidence in answer; or 
 (ii) if the IRDA holder files the evidence in answer in 
instalments —the final instalment of the evidence in 
answer; and 
 (b) notifies the opponent that all the evidence in answer has been 
fi
led. 
17A.34K  Extension of time for filing 
 (1) A party may request the Registrar to extend a period for filing 
evidence mentioned in regulation 17A.34J. 
 (2) The Registrar may extend the period only if the Registrar is 
satisfied that: 
 (a) the party: 
 (i) has made all reasonable efforts to comply with all 
relevant filing requirements of this Subdivision; and 
 (ii) despite acting promptly and diligently at all times to 
ensure the filing of the evidence within the period, is 
unable to do so; or 
 (b) there are exceptional circumstances that justify the extension. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) The Registrar: 
 (a) must decide the length of the extended period having regard 
to what is reasonable in the circumstances; and 
 (b) may do so on terms that the Registrar considers appropriate. 
 (4) In this regulation: 
exceptional circumstances  includes the following: 
 (a) a circumstance beyond the control of a party that prevents the 
party from complying with a filing requirement under this 
Subdivision; 
 (b) an error or omission by the Registrar or an employee that 
prevents a party from complying with a filing requirement 
under this Subdivision; 
 (c) an order of a court or a direction by the Registrar that the 
opposition be stayed. 
17A.34L  Registrar may allow cooling-off period 
 (1) This regulation applies to an opposition if: 
 (a) the notice of opposition has been filed; and 
 (b) the Registrar has not made a decision on the opposition under 
regulation 17A.34N; and 
 (c) the opposition has not been dismissed under 
regulation 17A.34B. 
 (2) If the Registrar is satisfied that the parties agree to a cooling-off 
period, the Registrar must allow a cooling-off period of 6 months. 
 (3) The Registrar must extend the cooling-off period for 6 months if, 
before the end of the period, the Registrar is satisfied that the 
parties agree to the extension. 
 (4) The Registrar must not: 
 (a) further extend the cooling-off period; or 
 (b) allow more than one cooling-off period for an opposition. 
 (5) If a party files a notice in an approved form requesting the 
Registrar to discontinue the cooling-off period, the Registrar must 
do so. 
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OPC50135 - 18/02/2013 5:04:48 PM  (6) The Registrar may direct the parties on steps they must take: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (7) The opposition resumes: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (8) If: 
 (a) the cooling-off period begins during the period mentioned in 
regulation 17A.34H or an evidentiary period mentioned in 
reg
ulation 17A.34J; and 
 (b) the opposition resumes; 
the period mentioned in regulation 17A.34H or 17A.34J restarts 
when the opposition resumes. 
17A.34M  Hearing 
 (1) This regulation applies to an opposition if: 
 (a) the opposition has not been dismissed under 
regulation 17A.34B; or 
 (b) the opposition has not been decided under 
regulation 17A.34N;or 
 (c) the opposition is not taken to have succeeded under 
regulation 17A.34H. 
 (2) An applicant may request the Registrar to hold a hearing if: 
 (a) the evidentiary period mentioned in subregulation 
17A.34J(3) has ended; and 
 (b) either: 
 (i) all evidence for the opposition proceeding has been 
filed; or 
 (ii) no evidence has been filed in that period. 
 (3) A party may request the Registrar to hold a hearing if: 
 (a) an evidentiary period mentioned in any of subregulations 
17A.34J(4) to (6) has ended; and 
 (b) either: 
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OPC50135 - 18/02/2013 5:04:48 PM  (i) all evidence for the opposition proceeding has been 
filed; or 
 (ii) no evidence has been filed in that period. 
 (4) The Registrar: 
 (a) must hold a hearing of the opposition if requested by a party 
in writing; or 
 (b) may decide, on the Registrar’s own initiative, to hold a 
hearing of the opposition. 
 (5) The hearing may, at the Registrar’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (6) If the Registrar decides on an oral hearing: 
 (a) the Registrar must notify the parties of the date, time and 
place of the hearing; and 
 (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing. 
 (7) The Registrar may take into account a party’s failure to file a 
summary of submissions under subregulation (6) in making an 
award of costs. 
Note: Regulatio ns 21.15 and 21.16 deal with hearings. 
17A.34N  Decision on opposition 
 (1) Unless the opposition proceedings are discontinued or dismissed, 
the Registrar must decide: 
 (a) to refuse protection in respect of all of the goods or services 
listed in the IRDA; or 
 (b) to extend protection in respect of some or all of the goods or 
services listed in the IRDA (with or without conditions or 
limitations); 
having regard to the extent (if any) to which the grounds on which 
the IRDA was opposed have been established. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) The Registrar must notify the International Bureau of the 
Registrar’s decision.  
17A.34P  Appeal 
 (1) Section 56 of the Act applies in relation to the Registrar’s decision 
on the opposition as if a reference in that section: 
 (a) to an applicant were a reference to the holder of an IRDA; 
and 
 (b) to a decision under section 55 of the Act were a reference to a 
decision under regulation 17A.34N. 
 (2) If an appeal is made, the Registrar must tell the International 
Bureau of the decision on the appeal. 
17A.34Q  Registrar may give direction 
 (1) The Registrar may give a direction in relation to an opposition to 
which this Division applies: 
 (a) if requested by a party in writing; or 
 (b) on the Registrar’s own initiative.  
 (2) If the Registrar proposes to give a direction, the Registrar must 
give the parties an opportunity to make representations about the 
direction. 
 (3) A direction must not be inconsistent with the Act or these 
Regulations. 
 (4) The Registrar must notify the parties of the direction as soon as 
practicable. 
17A.35  Registrar must notify parties of dismissal or discontinuance 
of opposition 
  If an opposition is dismissed under regulation 17A.34B or 
discontinued, the Registrar must notify the parties of the dismissal 
or discontinuance. 
17  Subdivision 4 of Division 5 of Part 17A 
Repeal the Subdivision, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM Subdivision D —Cessation of protection for non-use  
17A.48  Definitions 
  In this Subdivision: 
application for cessation of protection means an application to the 
Registrar for cessation of protection of a trade mark that is, or may 
become, a protected international trade mark. 
cessation of protection means the cessation of protection of a trade 
mark that is a protected international trade mark. 
notice of intention to defend means a notice filed under 
regulation 17A.48Q. 
notice of intention to oppose  means a notice filed under 
regulation 17A.48G. 
notice of opposition  means: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
opponent means a person who files: 
 (a) a notice of intention to oppose; and 
 (b) a statement of grounds and particulars. 
party  means an applicant or opponent. 
statement of grounds and particulars means a statement by an 
opponent that sets out: 
 (a) the grounds for cessation of protection that the opponent 
intends to rebut; and 
 (b) the facts and circumstances that form the basis for the 
opposition to the cessation of protection. 
Note: The definitions of the following terms are in section 6 of the Act: 
(a) applicant; 
(b) approved form; 
(c) employee; 
(d)
 file; 
(e) month; 
(f) person. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.48A  Registrar may give direction about filing document or 
evidence 
 (1) If a document or evidence may or must be filed under this 
Subdivision, the Registrar may give a direction specifying: 
 (a) the number of copies of the document or evidence to be filed; 
and 
 (b) the form in which the document or evidence is to be filed; 
and 
 (c) the means by which the document or evidence is to be filed. 
 (2) If a party does not comply with the direction, the Registrar may: 
 (a) treat the document or evidence as not having been filed; or 
 (b) tell the party to comply with the direction. 
 (3) The Registrar may make or revoke the direction as the Registrar 
sees fit. 
 (4) Regulation 17A.48B does not apply to the Regi strar’s decision to 
make or revoke the direction. 
17A.48B  Notification and opportunity to make representations 
 (1) This regulation applies if: 
 (a) a party makes a request to the Registrar under this 
Subdivision; or 
 (b) the Registrar proposes to make a decision on the Registrar’s 
own initiative under this Subdivision. 
 (2) The Registrar must: 
 (a) for paragraph (1)(a) —notify the other party of the request, 
including by giving the other party a copy of the request; or 
 (b) for paragraph (1)(b) —notify the parties of the proposed 
decision. 
 (3) If the Registrar proposes to grant the request, the Registrar must 
give the parties an opportunity to make representations: 
 (a) in writing; or 
 (b) at a hearing; or 
 (c) by other means that the Registrar states in the notification. 
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OPC50135 - 18/02/2013 5:04:48 PM  (4) The Registrar must notify the parties of the Registrar’s decision.  
17A.48C  Application for cessation of protection 
 (1) A person may make an application for cessation of protection. 
 (2) However, an application may not be made under subregulation (1) 
if an action concerning the protected international trade mark is 
pending in a prescribed court. 
 (3) If subregulation (2) applies, a person may apply to the court for an 
order directing the Registrar to cease protecting the protected 
international trade mark. 
17A.48D  Cessation of protection 
 (1) Part 9 of the Act and Part 9 of these Regulations apply in relation 
to an application for cessation of protection. 
 (2) For that application, a reference in those Parts: 
 (a) to a registered trade mark or a trade mark that is registered, or 
ente
red on the Register, is taken to be a reference to a trade 
mark that is, or may become, a protected international trade 
mark; and 
 (b) to removing a trade mark from the Register is taken to be a 
reference to the cessation of protection of the trade mark; and 
 (c) to an application for registration of a trade mark is taken to 
be a reference to an international registration designating 
Australia; and 
 (d) to an applicant for registration of a trade mark is taken to be a 
reference to the holder of an international registration 
designating Australia; and 
 (e) to a registered owner of a trade mark is taken to be a 
reference to the holder of a protected international trade 
mark; and 
 (f) to an application under section 92 is taken to be a reference 
to an application for cessation of protection; and 
 (g) to the date the application for registration of the trade mark 
was filed, or the filing date in respect of the registration of 
the trade mark, is taken to be a reference to: 
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OPC50135 - 18/02/2013 5:04:48 PM  (i) if the request for extension of protection to Australia 
was made under Article 3ter(1) of the Protocol —the date 
of international registration of the trade mark; or 
 (ii) if the request for extension of protection to Australia 
was made under Article 3ter2(2) of the Protocol —the 
date of recording of the request. 
Note: The expressions date of international registration  and date of 
recording  are defined in regulation 17A.2. 
 (3) Sections 96 to 101 of the Act apply in relation to the cessation of 
protection for non-use. 
17A.48E  Notification of application 
  For subsection 95(1) of the Act, the Registrar must, within one 
mont
h from the filing of the application, give a copy of the 
application to each person who, in the Registrar’s opinion, should 
receive one. 
17A.48F  Filing of notice of opposition 
  A notice of opposition is taken to be filed when the notice of 
intention to oppose and the statement of grounds and particulars 
have been filed under regulations 17A.48G and 17A.48J. 
17A.48G  Filing of notice of intention to oppose 
 (1) For subsection 96(2) of the Act, the period for filing a notice of 
intention to oppose the application for cessation of protection must 
be filed within 2 months from the day the application for cessation 
of protection is advertised in the Official Journal . 
 (2) The notice must be in an approved form. 
 (3) The Registrar must give a copy of the notice to the applicant. 
17A.48H   Opponent must have address for service 
 (1) This regulation applies despite any other regulation in this 
Subdivision. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) The Registrar is not required to take any action in response to a 
notice of opposition filed under regulation 17A.48F unless the 
opponent has notified the Registrar, in writing, of the opponent’s 
address for service in Australia. 
 (3) A requirement to give a document to an opponent, or to give the 
opponent an opportunity to make written representations or to be 
heard, does not apply if no address for service of the opponent is 
recorded in the Record of International Registrations. 
17A.48J   Filing of statement of grounds and particulars 
 (1) A statement of grounds and particulars must be filed within one 
month from the day the notice of intention to oppose is filed. 
 (2) The statement must be in an approved form. 
17A.48K  Statement of grounds and particulars must be adequate 
 (1) The Registrar must assess the adequacy of a statement of grounds 
and particulars filed under regulation 17A.48J. 
 (
2) If the Registrar decides that the statement is adequate, the Registrar 
must give a copy of the statement to the applicant. 
 (3) If the Registrar decides that the statement is inadequate, the 
Registrar may: 
 (a) direct the opponent to rectify the inadequacy by filing more 
information on the basis for the opposition to the cessation of 
protection; or 
 (b) dismiss the opposition. 
 (4) If the Registrar decides that the information filed under 
paragraph (3)(a) rectifies the inadequacy of the statement, the 
Registrar must give a copy of the statement and the information to 
the applicant. 
 (5) For subsection 99A(1) of the Act, the Registrar may dismiss the 
opposition if: 
 (a) the Registrar decides that the statement is inadequate; or 
 (b) the Registrar has directed the opponent to file information 
under paragraph (3)(a) and: 
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OPC50135 - 18/02/2013 5:04:48 PM  (i) the opponent fails to file the information; or 
 (ii) the Registrar decides that the information filed does not 
rectify the inadequacy of the statement. 
 (6) Regulation 17A.48B does not apply to this regulation. 
Note: For review rights in relation to a decision by the Registrar to dismiss 
an opposition, see subsection 99A(2) of the Act. 
17A.48L  Extension of time for filing —application 
 (1) A person who intends to oppose an application for cessation of 
protection may request the Registrar to extend: 
 (a) the period for filing a notice of intention to oppose under 
subregulation 17A.48G(1); or 
 (b) the period for filing a statement of grounds and particulars 
under subregulation 17A.48J(1). 
 (2) A request under paragraph (1)(a) or (b) may be made within the 
period for filing the document in question. 
Note: See subparagraph (3)(b)(ii) and subregulation 17A.48M(2) in relation 
to the consequences of making the request after the filing period has 
ended. 
 (3) The request must: 
 (a) be in an approved form; and 
 (b) be accompanied by a declaration stating: 
 (i) the facts and circumstances forming the basis for the 
grounds; and 
 (ii) if the period for filing the notice of intention to oppose 
or the statement of grounds and particulars has ended —
the reason why the request was not made within the 
period. 
Note: Regulations 21.6 and 21.7 deal with making and filing declarations. 
 (4) The request may be made only on either or both of the following 
grounds: 
 (a) an error or omission by the person, the person’s agent, t he 
Registrar or an employee; 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) circumstances beyond the control of the person, other than an 
error or omission by the person, the person’s agent, the 
Registrar or an employee. 
17A.48M  Extension of time for filing —grant 
 (1) The Registrar may grant a request under subregulation 17A.48L(1) 
for an extension of time only if the Registrar is satisfied that the 
grounds set out in the request justify the extension. 
 (2) However, if the request is made after the period for filing the 
notice or statement of grounds and particulars has ended, the 
Registrar must not grant the extension unless the Registrar is 
satisfied that there is sufficient reason for the delay in making the 
request. 
 (3) The Registrar must decide the length of the extended period having 
regard to what is reasonable in the circumstances. 
17A.48N  Amendment of notice of intention to oppose 
 (1) An opponent may request the Registrar to amend a notice of 
intention to oppose to correct a clerical error or obvious mistake. 
 (2) If an opposition is proceeding in the name of a person other than 
the opponent under section 96A of the Act, the person may request 
the Registrar to amend the notice of intention to oppose to record 
the person’s name.  
 (3) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended notice of intention to oppose to the applicant. 
 (5) Regulation 17A.48B does not apply to a request under 
subregulation (1) or (2). 
 (6) Section 96A of the Act applies in relation to the opposition. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.48P  Amendment of statement of grounds and particulars 
 (1) An opponent may request the Registrar to amend the statement of 
grounds and particulars to: 
 (a) correct an error or omission; or 
 (b) amend or add facts or circumstances that form the basis of 
the opposition to the cessation of protection. 
 (2) The Registrar may grant the request on terms that the Registrar 
considers appropriate. 
 (3) However, the Registrar may grant the request only if the Registrar 
is satisfied that the amendment should be made. 
 (4) If the Registrar grants the request, the Registrar must give a copy 
of the amended statement to the applicant. 
17A.48Q  Filing of notice of intention to defend 
 (1) A notice of intention to defend must be filed within one month 
from the day the applicant is given a copy of the statement of 
grounds and particulars. 
 (2) The Registrar must give the opponent a copy of the notice. 
 (3) If the applicant does not file the notice of intention to defend 
within the period mentioned in subregulation (1), the Registrar may 
decide to: 
 (a) take the opposition to have succeeded; and 
 (b) refuse to cease protection of the protected international trade 
mark. 
 (4) The Registrar must notify the parti es of the Registrar’s decision.  
17A.48R  Filing of evidence 
 (1) The Registrar must notify the parties that: 
  (a) all the evidence for an evidentiary period mentioned in this 
regulation has been filed; or 
 (b) no evidence was filed for the period. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) The Registrar must give a copy of any evidence filed by a party 
under this regulation to the other party: 
 (a) before the end of the relevant evidentiary period, if the 
Registrar considers it appropriate to do so; or 
 (b) after the evidentiary period ends. 
Evidence in support 
 (3) An opponent must file any evidence in support of the opposition 
within 3 months from the day the opponent is given a copy of the 
notice of intention to defend the application for cessation of 
protection. 
Evidence in answer 
 (4) If the opponent files evidence in support of the opposition, the 
applicant must file any evidence in answer to the opponent’s 
evidence within 3 months from the day the Registrar: 
 (a) gives the applicant: 
 (i) all the evidence in support; or 
 (ii) if the opponent files the evidence in support in 
instalments —the final instalment of the evidence in 
support; and 
 (b) notifies the applicant that all the evidence in support has been 
filed. 
 (5) If the opponent does not file any evidence in support of the 
opposition, regulation 17A.48S applies. 
Evidence in reply 
 (6) If the applicant files evidence in answer under subregulation (4) , 
the opponent must file any evidence in reply to the evidence in 
answer within 2 months from the day the Registrar: 
 (a) gives the opponent: 
 (i) all the evidence in answer; or 
 (ii) if the applicant files the evidence in answer in 
instalments —the final instalment of the evidence in 
answer; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) notifies the opponent that all the evidence in answer has been 
filed. 
17A.48S  Request for hearing and circumstances in which opposition 
taken to have en
ded 
 (1)  If an opponent requests the Registrar, within the period for filing 
evidence in support mentioned in subregulation 17A.48R(3), to 
hear the opposition, the Registrar must do so. 
 (2) The opposition is taken to have ended, but not to have been 
discontinued or dismissed, if the opponent does not: 
 (a) file evidence in support in accordance with subregulation 
17A.48R(3); or 
 (b) ask for a hearing under subregulation (1). 
 (3) The application for cessation of protection is taken to be 
unopposed if: 
 (a) the opposition is taken to have ended under subregulation 
(2); and 
 (b) the Registrar is satisfied that the application for cessation of 
protection is in order. 
Note 1: See section 97 of the Act in relation to what the Registrar must do if 
the application for cessation of protection is unopposed. 
Note 2: Regulations 21.15 and 21.16 deal with hearings. 
17A.48T  Extension of time for filing 
 (1) A party may request the Registrar to extend a period for filing 
evidence mentioned in regulation 17A.48R. 
 (2) The Registrar may extend the period only if the Registrar is 
satisfied that: 
 (a) the party: 
 (i) has made all reasonable efforts to comply with all 
relevant filing requirements of this Subdivision; and 
 (ii) despite acting promptly and diligently at all times to 
ensure the filing of the evidence within the period, is 
unable to do so; or 
 (b) there are exceptional circumstances that justify the extension. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) The Registrar: 
 (a) must decide the length of the extended period having regard 
to what is reasonable in the circumstances; and 
 (b) may do so on terms that the Registrar considers appropriate. 
 (4) In this regulation: 
exceptional circumstances  includes the following: 
 (a)  a circumstance beyond the control of a party that prevents the 
party from complying with a filing requirement under this 
Subdivision; 
 (b) an error or omission by the Registrar or an employee that 
prevents a party from complying with a filing requirement 
under this Subdivision; 
 (c) an order of a court or a direction by the Registrar that the 
opposition be stayed. 
17A.48U  Registrar may allow cooling-off period 
 (1) This regulation applies to an opposition if: 
 (a) the notice of opposition has been filed; and 
 (b) the Registrar has not decided to remove the trade mark under 
subsection 101(1) of the Act; and 
 (c) the opposition has not been dismissed under 
regulation 17A.48K. 
 (2) If the Registrar is satisfied that the parties agree to a cooling-off 
period, the Registrar must allow a cooling-off period of 6 months. 
 (3) The Registrar must extend the cooling-off period for 6 months if, 
before the end of the period, the Registrar is satisfied that the 
parties agree to the extension. 
 (4) The Registrar must not: 
 (a) further extend the cooling-off period; or 
 (b) allow more than one cooling-off period for an opposition. 
 (5) If a party files a notice, in an approved form, requesting the 
Registrar to discontinue the cooling-off period, the Registrar must 
do so. 
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OPC50135 - 18/02/2013 5:04:48 PM  (6) The Registrar may direct the parties on steps the parties must take: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (7) The opposition resumes: 
 (a) if the cooling-off period is discontinued; or 
 (b) otherwise —when the cooling-off period ends. 
 (8) If: 
 (a) the cooling-off period begins during the period mentioned in 
regulation 17A.48Q or an evidentiary period mentioned in 
reg
ulation 17A.48R; and 
 (b) the opposition resumes; 
the period mentioned in regulation 17A.48Q or 17A.48R restarts 
when the opposition resumes. 
17A.48V  Hearing 
 (1) This regulation applies to an opposition if the opposition has not 
been dismissed under regulation 17A.48K or discontinued. 
 (2) A party may request the Registrar to hold a hearing if an 
evidentiary period mentioned in regulation 17A.48R has ended; 
and either: 
 (a) all evidence for the opposition proceeding has been filed; or 
 (b) no evidence has been filed in that period. 
 (3) The Registrar: 
 (a) must hold a hearing of the opposition if requested by a party 
in writing; or 
 (b) may decide, on the Registrar’s own initiative, to hold a 
hearing of the opposition. 
 (4) The hearing may, at the Registrar’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (5) If the Registrar decides on an oral hearing: 
 (a) the Registrar must notify the parties of the date, time and 
place of the hearing; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing. 
 (6) The Registrar may take into account a party’s failure to file a 
summary of submissions under subregulation (5) in making an 
award of costs. 
Note: Regulations 21.15 and 21.16 deal with hearings. 
17A.48W   Registrar may give direction 
 (1) The Registrar may give a direction in relation to an opposition to 
which this Division applies: 
 (a) if requested by a party in writing; or 
 (b) on the Registrar’s own initiative.  
 (2) If the Registrar proposes to give a direction, the Registrar must 
give the parties an opportunity to make representations about the 
direction. 
 (3) A direction must not be inconsistent with the Act or these 
Regulations. 
 (4) The Registrar must notify the parties of the direction as soon as 
practicable. 
17A.48X  Registrar must notify International Bureau 
  If the result of an action under this Subdivision is that the Registrar 
decides, or is directed by a court: 
 (a) to cease protection of a protected international trade mark in 
respect of some or all of the goods or services covered by the 
protection; or 
 (b) that the trade mark should be protected subject to conditions 
or limitations; 
the Registrar must, if no appeal has been made at the end of any 
relevant appeal period, notify the International Bureau of that 
decision or order. 
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OPC50135 - 18/02/2013 5:04:48 PM 17A.48Y  Registrar must notify parties of dismissal or 
discontinuance  of opposition 
  If an opposition is dismissed under regulation 17A.48K or 
discontinued, the Registrar must notify the parties of the dismissal 
or discontinuance. 
17A.48Z  Cessation of protection of protected international trade 
mark 
  If the Registrar dismisses the opposition under 
regulation 17A.48K, the Registrar must cease protection in respect 
of the goods, services, or both, specified in the application for 
cessation of protection. 
18  Regulation 21.13 
Repeal the regulation, substitute: 
21.13   Award of costs 
 (1) For section 221 of the Act, if a matter is mentioned in these 
Regulations as a matter attracting the award of costs, costs may be 
awarded: 
 (a) in accordance with Schedule 8; or 
 (b) if the Registrar has a discretionary power in relation to the 
award of costs —as the Registrar considers appropriate. 
 (2) The costs must be taxed, allowed and certified by an employee 
appointed by the Registrar. 
 (3) The Registrar may review the taxation of costs by the employee. 
 (4) In this regulation: 
costs  does not include the costs mentioned in paragraph 105(2)(b) 
of the Act. 
19  After Division 2 of Part 21 
I
nsert: 
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21.20A  Definitions 
  In this Division: 
notice of opposition  means a notice filed under subregulation 
21.20B(1). 
party means an applicant or opponent. 
Note: The definitions of the following terms are in section 6 of the Act: 
(a) applicant; 
(b) approved form; 
(c) file; 
(d) month; 
(e) person. 
21.20B  Notice of opposition 
 (1) For subsection 224(6) of the Act, a person may oppose a request 
for an extension of time by filing a notice of opposition in an 
approved form within one month from the advertisement of the 
request for the extensions in the Official Journal under 
subsection 224(5) of the Act. 
 (2) The Registrar must give a copy of the notice to the applicant. 
21.20C  Notification and opportunity to make representations 
 (1) This regulation applies if: 
 (a) a party makes a request to the Registrar under this Division; 
or 
 (b) the Registrar proposes to make a decision on the Registrar’s 
own initiative under this Division. 
 (2) The Registrar must: 
 (a) for paragraph (1)(a) —notify the other party of the request, 
including by giving the other party a copy of the request; or 
 (b) for paragraph (1)(b) —notify the parties of the proposed 
decision. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) If the Registrar proposes to grant the request, the Registrar must 
give the parties an opportunity to make representations: 
 (a) in writing; or 
 (b) at a hearing; or 
 (c) by other means that the Registrar states in the notification. 
 (4) The Registrar must notify the parties of the Registrar’s decision.  
21.20 D  Practice and procedure 
  The Registrar may: 
 (a) decide the practice and procedure to be followed in an 
opposition to which this Division applies; and 
 (b) direct the parties accordingly. 
21.20E  Hearing 
 (1) The Registrar: 
 (a) must hold a hearing of the opposition if requested by a party 
in writing; or 
 (b) may decide, on the Registrar’s own initiative, to hold a 
hearing of the opposition. 
 (2) The hearing may, at the Registrar’s discretion, be:  
 (a) an oral hearing; or 
 (b) by written submissions. 
 (3) If the Registrar decides on an oral hearing: 
 (a) the Registrar must notify the parties of the date, time and 
place of the hearing; and 
 (b) the opponent must file a summary of submissions at least 10 
business days before the hearing; and 
 (c) the applicant must file a summary of submissions at least 5 
business days before the hearing. 
 (4) The Registrar may take into account a party’s failure to file a 
summary of submissions under subregulation (3) in making an 
award of costs. 
Note: Regulations 21.15 and 21.16 deal with hearings. 
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OPC50135 - 18/02/2013 5:04:48 PM  (5) The Registrar must: 
 (a) decide the opposition; and 
 (b) notify the parties of the Registrar’s decision.  
21.20F  Registrar may give direction 
 (1) The Registrar may give a direction in relation to an opposition to 
which this Division applies: 
 (a) if requested by a party in writing; or 
 (b) on the Registrar’s own initiative.  
 (2) If the Registrar proposes to give a direction, the Registrar must 
give the parties an opportunity to make representations about the 
direction. 
 (3) A direction must not be inconsistent with the Act or these 
Regulations. 
 (4) The Registrar must notify the parties of the direction as soon as 
practicable. 
21.20G  Registrar must notify parties of dismissal or discontinuance 
of opposition 
  If an opposition is dismissed or discontinued, the Registrar must 
notify the parties of the dismissal or discontinuance. 
20  Regulations 21.26 and 21.27 
Repeal the regulations. 
21  Paragraphs 21.28(1)(f) to (ha) 
Repeal the paragraphs, substitute: 
 (f) filing evidence under regulation 5.14, 9.16, 17A.34J or 
17A.48P; 
22  Paragraph 21.28(2)(b) 
Omit “ subregulation 21.26 (1) ”, substitute “ section 96 of the Act or 
subreg
ulation 17A.32(1), regulation 17.48F or subregulation 
21.20B(1) ”. 
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OPC50135 - 18/02/2013 5:04:48 PM 23  Part 1 of Schedule 8 
Repeal the Part, substitute: 
Part 1 —Costs 
   
Item  Column 1  
Matter  Column 2  
Amount  
1 Notice of intention to oppose  $200  
2 Statement of grounds and particulars  $200  
3 Receiving and perusing statement of grounds and 
particulars  $130  
4 Notice of intention  to defend  $200  
5 Notice of opposition filed under subregulation 6.6(1) 
or 21.20B(1)  $200  
6 Receiving and perusing a notice of opposition filed 
under subregulation 6.6(1) or 21.20B(1)  $130  
7 Evidence in support  $700  
8 Receiving and perusing evidence in  support  $300  
9 Evidence in answer  $700  
10 Receiving and perusing evidence in answer  $210  
11 Evidence in reply  $350  
12 Receiving and perusing evidence in reply  $130  
13 Preparation of cases for hearing  $525  
14 Attendance at hearing by registered patent attorney, 
registered trade marks attorney or solicitor without 
counsel  $260 an hour, but 
not more than 
$1,170 a day  
15 Attendance at hearing by registered patent attorney, 
registered trade marks attorney or solic itor instructing 
counsel  $200 an hour, but 
not more than 
$900 a day  
16 Counsel fees for attendance at a hearing  $300 an hour, but 
not more than 
$1,350 a day  
24  Schedule 9 (table item 6) 
Repeal the item, substitute: 
6 Filing an application for an extension under $150 for each 
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OPC50135 - 18/02/2013 5:04:48 PM regulation  5.9, 5.15, 9.11, 9.18, 17A.34C, 17A.34K, 
17A.48L or 17A.48T  month or part of a 
month for which 
the extension is 
sought  
25  Schedule 9 (table items 7 and 8) 
Repeal the items, substitute: 
7 Filing a notice of intention to oppose under:  
(a) section  52 of the Act or regulation  17A.3 3; or 
(b) section  96 of the Act or regulation  17A.48 G  
$250  
$150  
8 Filing a notice of opposition under:  
(a) subsection  224(6) of the Act; or  
(b) section  65A of the Act   
$250  
$250  
26  Schedule 9 (table item 13) 
Repeal the item, substitute: 
13 Filing an application for removal of a trade mark from 
the Register:  
(a) for non -use under section  92 of the Act; or  
(b) for cessation of protection for non -use under 
Subdivision  D of Division  5 of Part  17A  
 
$250  
$150  
27  Schedule 9 (table item 14) 
Repeal the item, substitute: 
14 Request for a hearing under regulation  5.17, 6.9, 9.17, 
9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E  $600  
28  Schedule 9 (table item 16) 
Repeal the item, substitute: 
16 Attendance at an oral hearing under regulation  5.17, 
6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 
21.20E  $600 for each 
day, or part of a 
day, less any 
amount paid 
under item  14 in 
relation to the 
hearing  
29  Schedule 9 (table item17) 
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OPC50135 - 18/02/2013 5:04:48 PM Repeal the item, substitute: 
17 Attendance at an oral hearing to which item  16 does 
not apply  $400 less any 
amount paid 
under item  15 in 
relation to the 
hearing  
30  Schedule 9 (table item 20) 
Repeal the item, substitute: 
20 Requesting a de cision under regulation  21.15  $300  
Designs Regulations 2004 
31  Subregulation 9.05(5) 
Repeal the subregulation, substitute: 
 (5) A person may oppose the amendment by filing a notice of 
opposition, in an approved form, within one month from the 
publication of the notice under subregulation (4). 
Note: For the circumstances in which an extension of time can be sought, 
see section 137 of the Act. 
 (6) The Registrar must give a copy of the notice of opposition to the 
person who requested the amendment as soon as practicable. 
 (7) If the amendment is not opposed, the Registrar must amend the 
entry as requested. 
 (8) If the amendment is opposed, the Registrar must amend the entry if 
the Registrar decides to do so, subject to a decision of a tribunal or 
prescribed court in relation to the opposition. 
32  Subregulation 11.13(3) 
Repeal the subregulation, substitute: 
 (3) For subsection 137(5) of the Act, the person must file a notice of 
opposition, in an approved form, within one month from the 
advertisement of the application. 
 (3A) The Registrar must give a copy of the notice of opposition to the 
person who applied for the extension as soon as practicable. 
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 4— Amendments relating to IP 
professionals 
   
Patents Regulations 1991 
1  Subregulation 1.3(1) 
Insert: 
AAT  means the Administrative Appeals Tribunal. 
2  Subregulation 1.3(1) 
Insert: 
Code of Conduct  means the standard of practice titled “Code of 
Conduct for Patent and Trade Marks Attorneys ” that is established 
by the Board from time to time. 
3  Subregulation 1.3(1) (definition of Disciplinary Tribunal ) 
Omit “ under regulation 20.41”, substitute “ by regulation 20.61 ”. 
4  Subregulation 1.3(1) 
Insert: 
Register of Patent Attorneys  means the register mentioned in 
section 198 of the Act. 
5  Subregulation 1.3(1) (definition of the Tribunal ) 
Repeal the definition. 
6  Chapter 20 (heading) 
Repe
al the heading, substitute: 
Chapter 20—Individual Patent Attorneys 
7  Before regulation 20.1 
Insert: 
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OPC50135 - 18/02/2013 5:04:48 PM 20.1A  Application of this Chapter 
  This Chapter applies to: 
 (a) a patent attorney who is not an incorporated patent attorney; 
and 
 (b) an individual applying for registration as a patent attorney. 
8  Subregulation 20.1(1) (definition of Disciplinary Tribunal ) 
Repeal the definition. 
9  Subregulation 20.1(1) (definition of Register or Register of 
Patent Attorneys ) 
Repeal the definition. 
10  Subregulation 20.1(1) 
Insert: 
serious offence means an offence that: 
 (a) involves obtaining property or a financial advantage by 
deception or fraudulent conduct; and 
 (b) is either: 
 (i) an indictable offence against a law of the 
Commonwealth, a State or a Territory (whether or not 
the offence may be dealt with summarily); or 
 (ii) an offence against a law of a foreign country that would 
be an indictable offence against a law of the 
Commonwealth, a State or a Territory if committed in 
Australia (whether or not the offence could be dealt 
with summarily if committed in Australia). 
11  Regulation 20.22 (heading) 
Repeal the heading, substitute: 
20.22   Requirements for remaining on Register of Patent Attorneys 
12  Part 6 of Chapter 20 (heading) 
Repeal the heading, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM Part 6 —Removal of attorney’s name from Register 
of Patent Attorneys 
13  Regulation 20.26 (heading) 
Repeal the heading, substitute: 
20.26   Voluntary removal of name from Register of Patent Attorneys 
14  A
fter Part 6 of Chapter 20 
Insert: 
Part 6A—Suspension of registration 
   
20.28A  Requirement to notify of serious offence 
 (1) A registered patent attorney who has been charged with a serious 
offence must, within 14 days after being charged, notify the 
Designated Manager, in writing, of the charge. 
 (2) If the registered patent attorney: 
 (a) fails to comply with subregulation (1); and 
 (b) does not have a reasonable excuse for failing to comply; 
the failure to comply constitutes unsatisfactory professional 
conduct. 
20.28B  Suspension of registration —serious offence 
 (1) The Designated Manager may, by written notice to a registered 
patent attorney, suspend the registered patent attorney’s 
registration if the Designated Manager: 
 (a) is notified under subregulation 20.28A(1); or 
 (b) becomes aware that the registered patent attorney has been 
charged with a serious offence. 
 (2) If the Designated Manager suspends the registered patent 
attorney’s registrati on: 
 (a) the suspension takes effect when the notice is given to the 
registered patent attorney; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) the Designated Manager must: 
 (i) give written notice to the Board of the suspension; and 
 (ii) by written notice, give the registered patent attorney 28 
days after the date of the notice ( a show cause notice ) 
within which to show cause why the suspension should 
be lifted. 
 (3) The Designated Manager must consider any information provided 
by the registered patent attorney in response to the show cause 
notice. 
 (4) The Designated Manager must immediately end the suspension if: 
 (a) the Designated Manager becomes aware that the charge is not 
proceeded with or the prosecution of the charge is 
abandoned; or 
 (b) the Designated Manager becomes aware that the proceedings 
have been completed without a conviction being recorded; or 
 (c) the proceedings have been completed with a conviction being 
recorded and the Disciplinary Tribunal decides not to 
continue the suspension or cancel the registered patent 
attorney’ s registration; or 
 (d) the Designated Manager considers that the suspension is no 
longer necessary. 
 (5) If the Designated Manager ends the suspension, the Designated 
Manager must notify, in writing, each of the following that the 
suspension has ended: 
 (a) the registered patent attorney; 
 (b) the Board; 
 (c) the Disciplinary Tribunal. 
15  Part 7 of Chapter 20 (heading) 
Repeal the heading, substitute: 
Part 7 —Restoring attorney’s name to Register of 
Patent Attorneys 
16  Regulation 20.29 (heading) 
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OPC50135 - 18/02/2013 5:04:48 PM Repeal the heading, substitute: 
20.29   Restoring attorney’s name to Register of Patent Attorneys  
17  Regulation 20.30 (heading) 
Repeal the heading, substitute: 
20.30   Restoring attorney’s name to Register of Patent Attorneys 
following payment of unpaid fee 
18  Regulation 20.31 (heading) 
Repeal the heading, substitute: 
20.31   Restoring attorney’s name to Register of Patent Attorneys in 
other circumstances 
19  Regulation 20.32 (definition of Code of Conduct ) 
Repeal the definition. 
20  Subregulation 20.44(2) 
Omit “ register ”, substitute “ Register of Patent Attorneys ”. 
21  After Chapter 20 
Insert: 
Chapter 20A —Incorporated Patent Attorney 
Part 1 —Introduction 
   
20A.1  Application of Chapter 20A 
  
This Chapter applies to: 
 (a) an incorporated patent attorney; and 
 (b) a company applying for registration as an incorporated patent 
attorney. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.2  Definitions 
  In this Chapter: 
annual registration fee means the fee set out in item 109 or 110 of 
Schedule 7. 
professional indemnity insurance  means insurance for claims that 
may be made against the company in relation to its business, 
practices or acts as an incorporated patent attorney. 
Part 2 —Obtaining registration for first time 
   
20A.3  Form of application 
  An application for registration as an incorporated patent attorney 
must: 
 (a) be in writing, in a form approved by the Designated 
Manager; and 
 (b) be accompanied by the following evidence and material: 
 (i) the name of each patent attorney director of the 
company; 
 (ii) evidence that the company is a registered company 
under the Corporations Act 2001 ; 
 (iii) evidence that the company has adequate and appropriate 
professional indemnity insurance; and 
 (c) be accompanied by the fee set out in item 108 of Schedule 7. 
20A.4  Certificate of registration 
  If the Designated Manager registers a company as an incorporated 
patent attorney, the Designated Manager must give the company a 
certificate of registration as soon as practicable. 
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20A.5  Requirements for remaining on Register of Patent Attorneys 
 (1) To remain on the Register of Patent Attorneys, a registered 
incorporated patent attorney must, for every year of registration, 
pay the annual registration fee. 
 (2) The Designated Manager must, not later than 1 June in each year, 
give to each registered incorporated patent attorney notice of the 
fee that is payable. 
 (3) The annual registration fee is payable on 1 July each year by a 
registered incorporated patent attorney: 
 (a) whose name is on the Register of Patent Attorneys on that 
day; and 
 (b) that has not asked the Designated Manager, under 
regulation 20A.6, to remove its name from the Register of 
Patent Attorneys. 
Part 4 —Removal from Register of Patent Attorneys 
   
20A.6  Voluntary removal of name from Register of Patent Attorneys 
  If a patent attorney director of a registered incorporated patent 
attorney asks the Designated Manager, in writing, to remove the 
name of the registered incorporated patent attorney from the 
Register of Patent Attorneys, the Designated Manager must 
comply with the request. 
20A.7  Failure to pay annual registration fee 
  If a registered incorporated patent attorney does not pay the annual 
registration fee by 31 July in the year the fee is payable, the 
Designated Manager must: 
 (a) remove the name of the incorporated patent attorney from the 
Register of Patent Attorneys; and 
 (b) notify, in writing, the attorney of the removal. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.8  Failure to maintain professional indemnity insurance 
 (1) If an incorporated patent attorney does not maintain adequate and 
appropriate professional indemnity insurance, the Designated 
Manager may remove the name of the attorney from the Register 
of Patent Attorneys. 
 (2) If the Designated Manager removes the name of the incorporated 
patent attorney from the Register of Patent Attorneys, the 
Designated Manager must notify, in writing, the attorney of the 
removal. 
Part 5 —Discipline 
Division 1 —General 
20A.9  Definitions 
  In this Part: 
former attorney  means a person whose registration as an 
incorporated patent attorney has been suspended or cancelled under 
this Part. 
20A.10  Board may apply for cancellation or suspension of 
incorporated patent attorney’s registration  
 (1) The Board may apply to the Disciplinary Tribunal to cancel or 
suspend an incorporated patent attorney’s registration if:  
 (a) a registered patent attorney who is, or was, an employee or 
officer of the incorporated patent attorney is found guilty of 
professional misconduct under subregulation 20.43(1); and 
 (b) the professional misconduct occurred when the registered 
patent attorney was an employee or officer of the 
incorporated patent attorney; and 
 (c) The Disciplinary Tribunal has cancelled or suspended the 
patent attorney’s registrat ion under subregulation 20.44(1). 
 (2) Before applying to the Disciplinary Tribunal, the Board may 
request an incorporated patent attorney to provide the Board with 
information relating to the professional misconduct. 
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OPC50135 - 18/02/2013 5:04:48 PM  (3) In deciding whether to apply to the Disciplinary Tribunal, the 
Board may consider the following: 
 (a) the professional misconduct engaged in by the registered 
patent attorney; 
 (b) the behaviour of the incorporated patent attorney’s officers 
and employees; 
 (c) whether officers and employees of the incorporated patent 
attorney have complied with the Code of Conduct; 
 (d) any information provided under subregulation (2). 
 (4) An application by the Board to the Disciplinary Tribunal must: 
 (a) be in writing; and 
 (b) set out the reasons why the Board considers the incorporated 
patent attorney’s registration should be cancelled or 
suspended. 
 (5) The Board must give the incorporated patent attorney, as soon as 
practicable after the application is made to the Disciplinary 
Tribunal, a copy of the application. 
Division 2 —Proceedings in Disciplinary Tribunal 
20A.11  Procedure of Disciplinary Tribunal 
 (1) The Disciplinary Tribunal may determine procedure that is not set 
out in this Division. 
 (2) Proceedings before the Tribunal are to be conducted quickly and 
informally, while allowing for proper consideration of the matter 
before the Tribunal. 
 (3) The Tribunal is not bound by the rules of evidence but may be 
informed on any matter in the manner it chooses. 
 (4) The Tribunal may take evidence on oath or on affirmation and, for 
that purpose, may administer an oath or affirmation. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.12  Notification of hearing 
 (1) The Disciplinary Tribunal must, as soon as practicable after 
receiving an application under regulation 20A.10, fix a day, time 
and place to hear the application. 
 (2) The Disciplinary Tribunal must, as soon as practicable, notify the 
incorporated patent attorney and the Board of that day, time and 
place. 
 (3) The day of hearing must not be less than 21 days after the day the 
incorporated patent attorney is notified of the day, time and place 
for the hearing. 
20A.13  Hearings to be public except in special circumstances 
 (1) A hearing before the Disciplinary Tribunal must be in public. 
 (2) However, if the Disciplinary Tribunal is reasonably satisfied that it 
is desirable to do so, in the public interest or because of the 
confidential nature of any evidence or matter, the Tribunal may: 
 (a) direct that a hearing, or a part of a hearing, is to take place in 
private and give directions as to the persons who may be 
present; and 
 (b) give directions restricting or prohibiting the publication or 
disclosure of: 
 (i) evidence given before the Tribunal, whether in public or 
in private; or 
 (ii) matters contained in documents lodged with the 
Tribunal or received in evidence by the Tribunal. 
 (3) A person commits an offence if the person: 
 (a) is given a direction under paragraph (2)(a) or (b); and 
 (b) does not comply with the direction. 
Penalty: 5 penalty units. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.14  Representation before Disciplinary Tribunal 
 (1) At the hearing before the Disciplinary Tribunal, the incorporated 
patent attorney must be represented by a patent attorney director of 
the incorporated patent attorney or a legal practitioner. 
 (2) A party to proceedings before the Disciplinary Tribunal, or a 
representative of the party, may request the Tribunal to summon 
witnesses. 
20A.15  Summoning of witnesses 
 (1) For the purpose of the hearing before the Disciplinary Tribunal, the 
Tribunal may, by instrument in writing signed by the person 
constituting the Tribunal: 
 (a) summon a person to appear before the Tribunal to give 
evidence and to produce any documents or articles mentioned 
in the summons; or 
 (b) summon a patent attorney director of the incorporated patent 
attorney to appear before the Tribunal: 
 (i) to produce any documents or articles mentioned in the 
summons; and 
 (ii) to give evidence to identify the documents or articles. 
 (2) A patent attorney director who is summoned must appear in 
person. 
20A.16  Offences by persons appearing before Disciplinary Tribunal 
 (1) A person commits an offence if the person: 
 (a) is summoned to appear before the Disciplinary Tribunal; and 
 (b) does not comply with the summons by: 
 (i) appearing as required by the summons; and 
 (ii) producing documents or articles as required by the 
summons; and 
 (iii) appearing and reporting to the Tribunal, as required. 
Penalty: 10 penalty units. 
 (2) It is a defence to a prosecution for an offence against subregulation 
(1) if: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) the defendant is prevented or hindered from complying with 
the summons by: 
 (i) a circumstance mentioned in Part 2.3 of the Criminal 
Code ; or 
 (ii) any other circumstance that the Disciplinary Tribunal 
reasonably considers is an impediment to the defendant 
complying with the summons; or 
 (b) in relation to paragraph (1)(c) —the defendant is excused by 
the Disciplinary Tribunal. 
Note: A defendant bears an evidential burden in relation to the matters 
mentioned in subparagraph (2)(a) (i)(see section 13.3 of the Criminal 
Code ). 
 (3) A person commits an offence if: 
 (a) the person: 
 (i) is not a patent attorney director to whom subregulation 
(5) applies; and 
 (ii) appears as a witness before the Disciplinary Tribunal; 
and 
 (iii) has been paid expenses and allowances; and 
 (b) the expenses and allowances have been determined by the 
Disciplinary Tribunal in accordance with Part 2 of 
Schedule 8; and 
 (c) the person refuses: 
 (i) to be sworn or make an affirmation; or 
 (ii) to answer a question relevant to the evidence that the 
person was summoned to give. 
Penalty: 10 penalty units. 
 (4) Strict liability applies to the physical element of an offence against 
subregulation (3) that is constituted by: 
 (a) the circumstance mentioned in subparagraph (3)(a)(i); and 
 (b) the circumstance mentioned in paragraph (3)(b). 
Note: For strict liability, see section 6.1 of the Criminal Code . 
 (5) A person commits an offence if the person: 
 (a) is a patent attorney director who has been summoned to 
appear at a hearing before the Disciplinary Tribunal; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) refuses: 
 (i) to be sworn or to make an affirmation; or 
 (ii) to answer a question relevant to the evidence that the 
person was summoned to give. 
Penalty: 10 penalty units. 
 (6) It is a defence to a prosecution for an offence against subregulation 
(3) or (5) if a person mentioned in the subregulation refused to 
answer a question or to produce a document or article because the 
answer to the question, or the document or article, may tend to 
prove that the person has committed an offence against a law of the 
Commonwealth or of a State or Territory. 
20A.17  Protection of person constituting Disciplinary Tribunal, 
witnesses etc. 
 (1) A person: 
 (a) constituting the Disciplinary Tribunal; or 
 (b) appointed under subregulation 20.64(2); 
has, in the exercise of the powers and the performance of the 
functions of the Tribunal under this Part, the same protection and 
immunity as a Justice of the High Court. 
 (2) A member of the Board has, in exercising a power under this Part, 
the same protection and immunity as a Justice of the High Court. 
 (3) A legal practitioner or other person appearing before the 
Disciplinary Tribunal has the same protection and immunity as a 
barrister has in appearing for a party in proceedings in the High 
Court. 
 (4) A person summoned to attend or appearing before the Disciplinary 
Tribunal as a witness: 
 (a) has the same protection; and 
 (b) is, in addition to the penalties provided by this Part, subject 
to the same liabilities; 
as a witness in proceedings in the High Court. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.18  Decision of Disciplinary Tribunal 
 (1) After hearing an application for the cancellation or suspension of 
the incorporated patent at torney’s registration, the Disciplinary 
Tribunal may: 
 (a) cancel the attorney’s registration as an incorporated patent 
attorney; or 
 (b) suspend the attorney’s registration as an incorporated patent 
attorney. 
 (2) The Disciplinary Tribunal may also impose conditions on the 
attorney’s return to the Register of Patent Attorneys after the 
cancellation has been lifted or the period of suspension has 
elapsed. 
 (3) In making a decision under this regulation, the Disciplinary 
Tribunal may consider the following: 
 (a) the professional misconduct engaged in; 
 (b) the behaviour of the incorporated patent attorney’s officers 
and employees; 
 (c) whether officers and employees of the incorporated patent 
attorney had complied with the Code of Conduct; 
 (d) findings made about the conduct of the incorporated patent 
attorney in any other proceedings brought before the 
Disciplinary Tribunal; 
 (e) findings made about the conduct of the incorporated patent 
attorney’s employees and officers in any other proceedings 
brought before the Disciplinary Tribunal; 
 (f) if the incorporated patent attorney failed, without reasonable 
excuse, to provide information requested by the Board under 
subregulation 20A.10(2) —the incorporate patent attorney’s 
failure to provide requested information. 
20A.19  Notification and publication of decisions of Disciplinary 
Tribunal 
 (1) The Disciplinary Tribunal must, within 14 days after making a 
decision under regulation 20A.18: 
 (a) prepare a written statement that states: 
 (i) the decision of the Tribunal; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) the reasons for the decision; and 
 (iii) the findings on any material questions of fact; and 
 (iv) evidence or other material on which the findings of fact 
are based; and 
 (b) give a copy of the statement to: 
 (i) the incorporated patent attorney who is the subject of 
the decision; and 
 (ii) the Board; and 
 (iii) the Designated Manager; and 
 (c) publish, in the Official Journal , a written statement that sets 
out the decision of the Tribunal. 
 (2) If the registration of an incorporated patent attorney is suspended, 
the Designated Manager must note the suspension and its duration 
in the Register of Patent Attorneys. 
 (3) If the registration of an incorporated patent attorney is cancelled, 
the Designated Manager must remove the name of the incorporated 
patent attorney from the Register of Patent Attorneys. 
20A.20  Completion of outstanding business 
 (1) If the Disciplinary Tribunal cancels the registration of an 
incorporated patent attorney, the Tribunal may appoint a registered 
patent attorney to complete the unfinished patents work of the 
former attorney. 
 (2) If the Disciplinary Tribunal suspends the registration of an 
incorporated patent attorney, the Tribunal may appoint a registered 
patent attorney to carry on the former attorney’s patents work  for: 
 (a) the period of the suspension; or 
 (b) a specified period, not longer than the period of suspension. 
 (3) The Disciplinary Tribunal must not appoint a registered patent 
attorney under subregulation (1) or (2) unless the registered patent 
attorney consents to the appointment. 
 (4) A registered patent attorney appointed under subregulation (1) or 
(2) may only act as a registered patent attorney for a client of the 
former attorney if the client has given consent for the appointed 
attorney to act. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.21   Former attorney may be required to provide assistance 
 (1) A registered patent attorney appointed under subregulation 
20A.20(1) or (2) may, by written notice, request the former 
attorney to make available the following: 
 (a) information about the patents work that the appointed 
attorney may reasonably require; 
 (b) books, accounts or other documents about the patents work 
that the appointed attorney may reasonably require; 
 (c) money held by the former attorney: 
 (i) on behalf of a client; or 
 (ii) that has been paid by a client in relation to services not 
yet performed for the client. 
 (2) A person commits an offence if the person: 
 (a) is a former attorney; and 
 (b) is given a notice under subregulation (1); and 
 (c) fails to comply with the notic e. 
Penalty: 5 penalty units. 
 (3) It is a defence to a prosecution for an offence against subregulation 
(2) if the former attorney is prevented or hindered from complying 
with a request in the notice by: 
 (a) a circumstance mentioned in Part 2.3 of the Criminal Code ; 
or 
 (b) any other circumstance that the Disciplinary Tribunal 
reasonably considers is an impediment to the defendant 
complying with the summons. 
Note: A defendant bears an evidential burden in relation to the question of 
whether he or she has a reasonable excuse (see section 13.3 of the 
Criminal Code ). 
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OPC50135 - 18/02/2013 5:04:48 PM Part 6 —Restoring attorney’s name to Register of 
Patent Attorneys 
   
20A.22  Restoring name to Register of Patent Attorneys 
 (1) This regulation sets out circumstances in which the Designated 
Manager must restore to the Register of Patent Attorneys the name 
of an incorporated patent attorney that has been removed under: 
 (a) regulation 20A.6, 20A.7 or 20A.8; or 
 (b) subsection 201B(7) of the Act. 
 (2) The Designated Manager must restore the name if: 
 (a) the attorney requests the Designated Manager, in the form 
approved by the Designated Manager, to restore the name; 
and 
 (b) the request includes: 
 (i) the name of each patent attorney director of the 
company; and 
 (ii) evidence that the company is a registered company 
under the Corporations Act 2001 ; and 
 (ii) evidence that the company has adequate and appropriate 
professional indemnity insurance; and 
 (c) the request is made: 
 (i) if the name was removed under regulation 20A.7—on 
or before 1 September of the year that the name was 
removed from the Register of Patent Attorneys, or 
within a further period that the Designated Manager 
allows; or 
 (ii) in any other case —within 3 years after the name was 
removed from the Register of Patent Attorneys; and 
 (d) the attorney pays: 
 (i) the annual registration fee for the year the reinstatement 
is made; and 
 (ii) the fee mentioned in item 111 of Schedule 7. 
22  Subregulation 22.12(1) 
Omit “Patent Attorneys”.  
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OPC50135 - 18/02/2013 5:04:48 PM 23  Subparagraphs 22.26(2)(c)(ii) and (iii) 
Repeal the subparagraphs, substitute: 
 (ii) regulation 20.28B (suspension of registration —serious 
offence ); 
 (iii) subregulation 20.29(3) (imposing a condition when 
restoring attorney’s name to Regist er of Patent 
Attorneys ); 
24  Subparagraph 22.26(2)(c)(iv) 
Omit “ Register in other circumstances ”); or”, substitute Register of 
Patent Attorneys in other circumstances); ”. 
25  At the end of paragraph 22.26(2)(c) 
Add:
 
 ; (v) regulation 20A.8 (failing to maintain professional 
indemnity insurance); or 
26  At the end of paragraph 22.26(2)(d) 
Add:
 
 ; (vi) regulation 20A.18 (decision of Disciplinary Tribunal). 
27  Part 1 of Schedule 7 (at the end of the table) 
A
dd: 
108 Applying for registration as an incorporated patent 
attorney  300 
109 Annual registration of an incorporated patent attorney  350 
110 Annual registration fee payable for combined 
registration as an incorporated patent attorney and 
incorporated trade marks attorney  550 
111 Applying to be restored to the Register of Patent 
Attorneys, as authorised by regulation  20A.22  250 
28  Further amendments —Register 
  The following provisions are amended by omitting “Register ” and 
substituting “Register of Patent Attorneys” : 
 (a) subregulations 20.22(1) and (2); 
 (b) subregulations 20.28(1), (2) and (3); 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) subregulations 20.29(1), (2), (3) and (4); 
 (d) regulation 20.30; 
 (e) subregulation 20.31(1). 
29  Further amendments —Tribunal 
  The following provisions are amended by omitting “Tribunal” and 
substituting “AAT” : 
 (a) subparagraph 6.2(1)(b)(i); 
 (b) paragraphs 10.6(4)(a) and (b); 
 (c) paragraph 10.7(5)(b); 
 (d) paragraph 13.4(1)(h); 
 (e) subparagraph 13.4(1)(j)(ii); 
 (f) paragraph 22.11(1B)(a); 
 (g) subregulations 22.26(2), (3) and (5). 
Trade Marks Regulations 1995 
30  Regulation 2.1 
Insert: 
AAT means the Administrative Appeals Tribunal. 
31  Regulation 2.1 
Insert: 
Board  means the Professional Standards Board for Patent and 
Trade Marks Attorneys established by section 227A of the Trade 
M
arks Act 1990 . 
32  Regulation 2.1 
Inse
rt: 
Designated Manager has the same meaning as in the Patents Act 
1990. 
33  Regulation 2.1 
Insert: 
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OPC50135 - 18/02/2013 5:04:48 PM Disciplinary Tribunal  means the Patent and Trade Marks 
Attorneys Disciplinary Tribunal established by regulation 20.61 of 
the Patents Regulations 1991 . 
34  Regulation 2.1 
Insert: 
Register of Trade Marks Attorneys  means the register mentioned 
in section 228A of the Act. 
35  Before regulation 20.1 
Insert: 
20.1A  Application of Part 
  This Part applies to: 
 (a) a trade marks attorney who is not an incorporated trade 
marks attorney; and 
 (b) an individual applying for registration as a trade marks 
attorney. 
36  Subregulation 20.1(1) (definition of Board ) 
Repeal the definition. 
37  Subregulation 20.1(1) (definition of Register or Register of 
Trade Marks Attorneys ) 
Repeal the definition. 
38  Subregulation 20.1( 1) 
Insert: 
serious offence means an offence that: 
 (a) involves obtaining property or a financial advantage by 
deception or fraudulent conduct; and 
 (b) is either: 
 (i) an indictable offence against a law of the 
Commonwealth, a State or a Territory (whether or not 
the offence may be dealt with summarily); or 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) an offence against a law of a foreign country that would 
be an indictable offence against a law of the 
Commonwealth, a State or a Territory if committed in 
Australia (whether or not the offence could be dealt 
with summarily if committed in Australia). 
unsatisfactory professional conduct  has the meaning given by 
regulation 20.32 of the Patents Regulations 1991. 
39  Division 5 of Part 20 (heading) 
Repeal the heading, substitute: 
Division 5 —Maintaining registration and removing and 
restoring name to Register of Trade Marks 
Attorneys 
40  Regulation 20.14 (heading) 
Repeal the heading, substitute: 
20.14   Maintaining registration and removing and restoring name to 
Register of Trade Marks Attorneys 
41  After Division 5 
Insert: 
Division 5A—Suspension of registration 
20.14A  Requirement to notify of serious offence 
 (1) A registered trade marks attorney who has been charged with a 
serious offence must, within 14 days after being charged, notify the 
Designated Manager, in writing, of the charge. 
 (2) If the registered trade marks attorney: 
 (a) fails to comply with subregulation (1); and 
 (b) does not have a reasonable excuse for failing to comply; 
the failure to comply constitutes unsatisfactory professional 
conduct. 
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OPC50135 - 18/02/2013 5:04:48 PM 20.14B  Suspension from Register —serious offence 
 (1) The Designated Manager may, by written notice to a registered 
trade marks attorney, suspend the registered trade marks attorney’s 
registration if the Designated Manager: 
 (a) is notified under subregulation 20.14A(1); or 
 (b) becomes aware that the registered trade marks attorney has 
been charged with a serious offence. 
 (2) If the Designated Manager suspends the attorney’s registration:  
 (a) the suspension takes effect when the notice is given to the 
registered trade marks attorney; and 
 (b) the Designated Manager must: 
 (i) give written notice to the Board of the suspension; and 
 (ii) by written notice, give the registered trade marks 
attorney 28 days after the date of the notice ( a show 
cause
 notice ) within which to show cause why the 
suspension should be lifted. 
 (3) The Designated Manager must consider any information provided 
by the registered trade marks attorney in response to the show 
cause notice. 
 (4) The Designated Manager must immediately end the suspension if: 
 (a) the Designated Manager becomes aware that the charge is not 
proceeded with or the prosecution of the charge is 
abandoned; or 
 (b) the Designated Manager becomes aware that the proceedings 
have been completed without a conviction being recorded; or 
 (c) the proceedings have been completed with a conviction being 
recorded and the Disciplinary Tribunal decides not to 
continue the suspension or cancel the registered trade marks 
attorney’s registration; or  
 (d) the Designated Manager considers that the suspension is no 
longer necessary. 
 (5) If the Designated Manager ends the suspension, the Designated 
Manager must notify, in writing, each of the following that the 
suspension has ended: 
 (a) the registered trade marks attorney; 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) the Board; 
 (c) the Disciplinary Tribunal. 
42  After Part 20 
Insert: 
Part 20A—Incorporated trade marks attorneys 
Division 1 —General 
20A.1  Application of Part 20A 
  
This Part applies to: 
 (a) an incorporated trade marks attorney; and 
 (b) a company applying for registration as an incorporated trade 
marks attorney. 
20A.2  Definitions 
  In this Part: 
professional indemnity insurance  means insurance for claims that 
may be made against the company in relation to its business, 
practices or acts as an incorporated trade marks attorney. 
Division 2 —Obtaining registration for first time 
20A.3  Form of application 
  An application for registration as an incorporated trade marks 
attorney must: 
 (a) be in writing, in a form approved by the Designated 
Manager; and 
 (b) be accompanied by the following evidence and material: 
 (i) the name of each trade marks attorney director of the 
company; 
 (ii) evidence that the company is a registered company 
under the Corporations Act 2001 ; 
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OPC50135 - 18/02/2013 5:04:48 PM  (iii) evidence that the company has adequate and appropriate 
professional indemnity insurance; and 
 (c) be accompanied by the fee set out in item 36 of Schedule 9. 
20A.4  Certificate of registration 
  If the Designated Manager registers a company as an incorporated 
trade marks attorney, the Designated Manager must give the 
company a certificate of registration as soon as practicable. 
Division 3 —Maintaining registration 
20A.5  Requirements for remaining on Register of Trade Marks 
Attorneys 
 (1) To remain on the Register of Trade Marks Attorneys, a registered 
incorporated trade marks attorney must, for every year of 
registration, pay the annual registration fee. 
 (2) The Designated Manager must, not later than 1 June in each year, 
give to each registered incorporated trade marks attorney notice of 
the fee that is payable. 
 (3) The annual registration fee is payable on 1 July each year by a 
registered incorporated trade marks attorney: 
 (a) whose name is on the Register of Trade Marks Attorneys on 
that day; and 
 (b) that has not asked the Designated Manager, under 
regulation 20A.6, to remove its name from the Register of 
Trade Marks Attorneys. 
Division 4 —Removal from Register of Trade Marks 
Attorneys 
20A.6  Voluntary removal of name from Register of Trade Marks 
Attorneys 
  If a trade marks attorney director of a registered incorporated trade 
marks attorney asks the Designated Manager, in writing, to remove 
the name of the incorporated trade marks attorney from the 
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comply with the request. 
20A.7  Failure to pay annual registration fee 
  If a registered incorporated trade marks attorney does not pay the 
annual registration fee by 31 July in the year the fee is payable, the 
Designated Manager must: 
 (a) remove the name of the attorney from the Register of Trade 
Marks Attorneys; and 
 (b) notify, in writing, the attorney of the removal. 
20A.8  Failure to maintain professional indemnity insurance 
 (1) If an incorporated trade marks attorney does not maintain adequat e 
and appropriate professional indemnity insurance, the Designated 
Manager may remove the name of the attorney from the Register 
of Trade Marks Attorneys. 
 (2) If the Designated Manager removes the name of the incorporated 
trade marks attorney from the Register of Trade Marks Attorneys, 
the Designated Manager must notify, in writing, the attorney of the 
removal. 
Division 5 —Discipline 
Subdivision A —General 
20A.9  Definitions 
  In this Part: 
former attorney  means a person whose registration as an 
incorporated trade marks attorney has been suspended or cancelled 
under this Division. 
20A.10  Board may apply for cancellation or suspension of 
incorporated trade marks attorney’s registration  
 (1) The Board may apply to the Disciplinary Tribunal to cancel or 
suspend an incorporated trade marks attorney’s registration if:  
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OPC50135 - 18/02/2013 5:04:48 PM  (a) a registered trade marks attorney who is, or was, an employee 
or officer of the incorporated trade marks attorney is found 
guilty of professional misconduct under Division 5 of 
Part 20; and 
 (b) the professional misconduct occurred when the registered 
trade marks attorney was an employee or officer of the 
incorporated trade marks attorney; and 
 (c) the Disciplinary Tribunal has cancelled or suspended the 
trade marks attorney’s registration. 
 (2) Before applying to the Disciplinary Tribunal, the Board may 
request an incorporated trade marks attorney to provide the Board 
with information relating to the professional misconduct. 
 (3) In deciding whether to apply to the Disciplinary Tribunal, the 
Board may consider the following: 
 (a) the professional misconduct engaged in by the registered 
trade marks attorney; 
 (b) the behaviour of the incorporated trade marks attorney’s 
officers and employees; 
 (c) whether officers and employees of the incorporated trade 
marks attorney have complied with the Code of Conduct; 
 (d) any information provided under subregulation (2). 
 (4) An application by the Board to the Disciplinary Tribunal must: 
 (a) be in writing; and 
 (b) set out the reasons why the Board considers the incorporated 
trade marks attorney’s registration should be cancelled or 
suspended. 
 (5) The Board must give the incorporated trade marks attorney, as 
soon as practicable after the application is made to the Disciplinary 
Tribunal, a copy of the application. 
Subdivision B —Proceedings in Disciplinary Tribunal 
20A.11  Procedure of Disciplinary Tribunal 
 (1) The Disciplinary Tribunal may determine procedure that is not set 
out in this Division. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) Proceedings before the Tribunal are to be conducted quickly and 
informally, while allowing for proper consideration of the matter 
before the Tribunal. 
 (3) The Tribunal is not bound by the rules of evidence but may be 
informed on any matter in the manner it chooses. 
 (4) The Tribunal may take evidence on oath or on affirmation and, for 
that purpose, may administer an oath or affirmation. 
20A.12  Notification of hearing 
 (1) The Disciplinary Tribunal must, as soon as practicable after 
receiving an application under regulation 20A.10, fix a day, time 
and place to hear the application. 
 (2) The Disciplinary Tribunal must, as soon as practicable, notify the 
incorporated trade marks attorney and the Board of that day, time 
and place. 
 (3) The day of hearing must not be less than 21 days after the day the 
incorporated trade marks attorney is notified of the hearing. 
20A.13  Hearings to be public except in special circumstances 
 (1) A hearing before the Disciplinary Tribunal must be in public. 
 (2) However, if the Disciplinary Tribunal is reasonably satisfied that it 
is desirable to do so, in the public interest or because of the 
confidential nature of any evidence or matter, the Tribunal may: 
 (a) direct that a hearing, or a part of a hearing, is to take place in 
private and give directions as to the persons who may be 
present; and 
 (b) give directions restricting or prohibiting the publication or 
disclosure of: 
 (i) evidence given before the Tribunal, whether in public or 
in private; or 
 (ii) matters contained in documents lodged with the 
Tribunal or received in evidence by the Tribunal. 
 (3) A person commits an offence if the person: 
 (a) is given a direction under paragraph (2)(a) or (b); and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) does not comply with the direction. 
Penalty: 5 penalty units. 
20A.14   Representation before Disciplinary Tribunal 
 (1) At the hearing before the Disciplinary Tribunal, the incorporated 
trade marks attorney must be represented by a trade marks attorney 
director of the incorporated trade marks attorney or a legal 
practitioner. 
 (2) A party to proceedings before the Disciplinary Tribunal, or a 
representative of the party, may request the Tribunal to summon 
witnesses. 
20A.15  Summoning of witnesses 
 (1) For the purpose of the hearing before the Disciplinary Tribunal, the 
Tribunal may, by instrument in writing signed by the person 
constituting the Tribunal: 
 (a) summon a person to appear before the Tribunal to give 
evidence and to produce any documents or articles mentioned 
in the summons; or 
 (b) summon a trade marks attorney director of the incorporated 
trade marks attorney to appear before the Tribunal: 
 (i) to produce any documents or articles mentioned in the 
summons; and 
 (ii) to give evidence to identify the documents or articles. 
 (2) A trade marks attorney director who is summoned must appear in 
person. 
20A.16  Offences by persons appearing before Disciplinary Tribunal 
 (1) A person commits an offence if the person: 
 (a) is summoned to appear before the Disciplinary Tribunal; and 
 (b) does not comply with the summons by: 
 (i) appearing as required by the summons; and 
 (ii) producing documents or articles as required by the 
summons; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (iii) appearing and reporting to the Tribunal, as required. 
Penalty: 10 penalty units. 
 (2) It is a defence to a prosecution for an offence against subregulation 
(1) if: 
 (a) the defendant is prevented or hindered from complying with 
the summons by: 
 (i) a circumstance mentioned in Part 2.3 of the Criminal 
Code ; or 
 (ii) any other circumstance that the Disciplinary Tribunal 
reasonably considers is an impediment to the defendant 
complying with the summons; or 
 (b) in relation to paragraph (1)( c)—the defendant is excused by 
the Disciplinary Tribunal. 
Note: A defendant bears an evidential burden in relation to the matters 
mentioned in subparagraph (2) (a)(i)(see section 13.3 of the Criminal 
Code ). 
 (3) A person commits an offence if: 
 (a) the person: 
 (i) is not a trade marks attorney director to whom 
subregulation (5) applies; and 
 (ii) appears as a witness before the Disciplinary Tribunal; 
and 
 (iii) has been paid expenses and allowances; and 
 (b) the expenses and allowances have been determined by the 
Disciplinary Tribunal in accordance with Part 2 of 
Schedule 8 to the Patents Regulations 1991; and 
 (c) the person refuses: 
 (i) to be sworn or make an affirmation; or 
 (ii) to answer a question relevant to the evidence that the 
person was summoned to give. 
Penalty: 10 penalty units. 
 (4) Strict liability applies to the physical element of an offence against 
subregulation (3) that is constituted by: 
 (a) the circumstance mentioned in subparagraph (3)( a)(i); and 
 (b) the circumstance mentioned in paragraph ( 3)(b). 
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OPC50135 - 18/02/2013 5:04:48 PM Note: For strict liability, see section 6.1 of the Criminal Code . 
 (5) A person commits an offence if the person: 
 (a) is a trade marks attorney director who has been summoned to 
appear at a hearing before the Disciplinary Tribunal; and 
 (b) refuses: 
 (i) to be sworn or to make an affirmation; or 
 (ii) to answer a question relevant to the evidence that the 
person was summoned to give. 
Penalty: 10 penalty units. 
 (6) It is a defence to a prosecution for an offence against subregulation 
(3) or (5) if a person mentioned in the subregulation refused to 
answer a question or to produce a document or article because the 
answer to the question, or the document or article, may tend to 
prove that the person has committed an offence against a law of the 
Commonwealth or of a State or Territory. 
20A.17  Protection of person constituting Disciplinary Tribunal, 
witnesses etc. 
 (1) A person: 
 (a) constituting the Disciplinary Tribunal; or 
 (b) appointed to the Disciplinary Tribunal under subregulation 
20.64(2) of the Patents Regulations 1991 ; 
has, in the exercise of the powers and the performance of the 
functions of the Tribunal under this Part, the same protection and 
immunity as a Justice of the High Court. 
 (2) A member of the Board has, in exercising a power under this Part, 
the same protection and immunity as a Justice of the High Court. 
 (3) A legal practitioner or other person appearing before the 
Disciplinary Tribunal has the same protection and immunity as a 
barrister has in appearing for a party in proceedings in the High 
Court. 
 (4) A person summoned to attend or appearing before the Disciplinar y 
Tribunal as a witness: 
 (a) has the same protection; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) is, in addition to the penalties provided by this Part, subject 
to the same liabilities; 
as a witness in proceedings in the High Court. 
20A.18  Decision of Disciplinary Tribunal 
 (1) After hearing an application for the cancellation or suspension of 
the incorporated trade marks attorney’s registration, the 
Disciplinary Tribunal may: 
 (a) cancel the attorney’s registration as an incorporated trade 
marks attorney; or 
 (b) suspend the attorney’s r egistration as an incorporated trade 
marks attorney. 
 (2) The Disciplinary Tribunal may also impose conditions on the 
attorney’s return to the Register of Trade Marks Attorneys after the 
cancellation has been lifted or the period of suspension has 
elapsed. 
 (3) In making a decision under this regulation, the Disciplinary 
Tribunal may consider the following: 
 (a) the professional misconduct engaged in; 
 (b) the behaviour of the incorporated trade marks attorney’s 
officers and employees; 
 (c) whether officers and employees of the incorporated trade 
marks attorney had complied with the Code of Conduct; 
 (d) findings made about the conduct of the incorporated trade 
marks attorney in any other proceedings brought before the 
Disciplinary Tribunal; 
 (e) findings made about the conduct of the incorporated trade 
marks attorney’s employees and officers in any other 
proceedings brought before the Disciplinary Tribunal; 
 (f) if the incorporated trade marks attorney failed, without 
reasonable excuse, to provide information requested by the 
Board under subregulation 20A.10(2) —the incorporated 
trade marks attorney’s failure to provide requested 
information. 
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OPC50135 - 18/02/2013 5:04:48 PM 20A.19  Notification and publication of decisions of Disciplinary 
Tribunal 
 (1) The Disciplinary Tribunal must, within 14 days after making a 
decision under regulation 20A.18: 
 (a) prepare a written statement that states: 
 (i) the decision of the Tribunal; and 
 (ii) the reasons for the decision; and 
 (iii) the findings on any material questions of fact; and 
 (iv) evidence or other material on which the findings of fact 
are based; and 
 (b) give a copy of the statement to: 
 (i) the incorporated trade marks attorney who is the subject 
of the decision; and 
 (ii) the Board; and 
 (iii) the Designated Manager; and 
 (c) publish, in the Official Journal , a written statement that sets 
out the decision of the Tribunal. 
 (2) If the registration of an incorporated trade marks attorney is 
suspended, the Designated Manager must note the suspension and 
its duration in the Register of Trade Marks Attorneys. 
 (3) If the registration of an incorporated trade marks attorney is 
cancelled, the Designated Manager must remove the name of the 
incorporated trade marks attorney from the Register of Trade 
Marks Attorneys. 
20A.20  Completion of outstanding business 
 (1) If the Disciplinary Tribunal cancels the registration of an 
incorporated trade marks attorney, the Tribunal may appoint a 
registered trade marks attorney to complete the unfinished trade 
marks work of the former attorney. 
 (2) If the Disciplinary Tribunal suspends the registration of an 
incorporated trade marks attorney, the Tribunal may appoint a 
registered trade marks attorney to carry on the former attorney’s 
trade marks work for: 
 (a) the period of the suspension; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) a specified period, not longer than the period of suspension. 
 (3) The Disciplinary Tribunal must not appoint a registered trade 
marks attorney under subregulation (1) or (2) unless the registered 
trade marks attorney consents to the appointment. 
 (4) A registered trade marks attorney appointed under subregulation 
(1) or (2) may only act as a registered trade marks attorney for a 
client of the former attorney if the client has given consent for the 
appointed attorney to act. 
20A.21  Former attorney may be required to provide assistance 
 (1) A registered trade marks attorney appointed under subregulation 
20A.20(1) or (2) may, by written notice, request the former 
attorney to make available: 
 (a) information about the trade marks work that the appointed 
attorney may reasonably require; or 
 (b) books, accounts or other documents about the trade marks 
work that the appointed attorney may reasonably require; or 
 (c) money held by the former attorney: 
 (i) on behalf of a client; or 
 (ii) that has been paid by a client in relation to services not 
yet performed for the client. 
 (2) A person commits an offence if the person: 
 (a) is a former attorney; and 
 (b) is given a notice under subregulation (1); and 
 (c) fails to comply with the notice. 
Penalty: 5 penalty units. 
 (3) It is a defence to a prosecution for an offence against subregulation 
(2) if the former attorney is prevented or hindered from complying 
with a request in the notice by: 
 (a) a circumstance mentioned in Part 2.3 of the Criminal Code ; 
or 
 (b) any other circumstance that the Disciplinary Tribunal 
reasonably considers is an impediment to the defendant 
complying with the summons. 
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OPC50135 - 18/02/2013 5:04:48 PM Note: A defendant bears an evidential burden in relation to the question of 
whether he or she has a reasonable excuse (see section 13.3 of the 
Criminal Code ). 
Division 6 —Returning to Register of Trade Marks 
Attorneys 
20A.22  Restoring name to Register of Trade Marks Attorneys 
 (1) This regulation sets out circumstances in which the Designated 
Manager must restore to the Register of Trade Marks Attorneys the 
name of an incorporated trade marks attorney that has been 
removed from the Register of Trade Marks Attorneys under: 
 (a) regulation 20A.6, 20A.7 or 20A.8; or 
 (b) subsection 157A(7) of the Act. 
 (2) The Designated Manager must restore the name if: 
 (a) the attorney requests the Designated Manager, in the form 
approved by the Designated Manager, to restore the name; 
and 
 (b) the request includes: 
 (i) the name of each trade marks attorney director of the 
company; and 
 (ii) evidence that the company is a registered company 
under the Corporations Act 2001 ; and 
 (ii) evidence that the company has adequate and appropriate 
professional indemnity insurance; and 
 (c) the request is made: 
 (i) if the name was removed under regulation 20A.7—on 
or before 1 September of the year that the name was 
removed from the Register of Trade Marks Attorneys, 
or within a further period that the Designated Manager 
allows; or 
 (ii) in any other case —within 3 years after the name was 
removed from the Register of Trade Marks Attorneys; 
and 
 (d) the attorney pays: 
 (i) the annual registration fee for the year the reinstatement 
is made; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) the fee mentioned in item 39 of Schedule 9. 
43  Subparagraphs 21.35(2)(b)(ii) and (iii) 
Repeal the subparagraphs, substitute: 
 (ii) subregulation 20.29(3) (imposing a condition when 
restoring attorney’s name to Re gister of Trade Marks 
Attorneys ); 
44  Subparagraph 21.35(2)(b)(iv) 
Renumber as subparagraph (iii). 
45  After paragraph 21.35(2)(b) 
Insert: 
 (ba) the Designated Manager under the following provisions: 
 (i) regulation 20.14B (suspending registration for serious 
offence); 
 (ii) regulation 20A.8 (failing to maintain professional 
indemnity insurance); or 
 (bb) the Disciplinary Tribunal under regulation 20A.18 (decision 
of Disciplinary Tribunal); or 
46  Schedule 9 (at the end of the table) 
Add: 
36 Applying for registration as an incorporated trade 
marks attorney  $300  
37 Annual registration of an incorporated trade marks 
attorney  $350  
38 Annual registration fee payable for combined 
registration as an incorporated trade marks attorney and 
an incorporated patent attorney  $550  
39 Applying to be restored to the Register of Trade Marks 
Attorneys, as authorised by regulation  20A.22  $250  
47  Further amendments —Tribunal 
  The following provisions are amended by omitting “Tribunal ” and 
substituting “AAT” : 
 (a) subparagraph 4.14(3)(g)(ii); 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) subregulation 7.1(2); 
 (c) subparagraph 17A.22(3)(h)(ii); 
 (d) subparagraph 21.35(2). 
48  Further amendments —Administrative Appeals Tribunal 
  The following provisions are amended by omitting “Administrative 
Appeals Tribunal”  and substituting “AAT” : 
 (a) paragraph 4.13(2)(c); 
 (b) subparagraph 4.14(3)(g)(ii); 
 (c) paragraph 7.1(2)(a); 
 (d) regulation 16.7; 
 (e) subregulation 16.10(5); 
 (f) paragraph 17A.21(2)(c); 
 (g) subparagraph 17A.22(3)(h)(ii). 
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 5— Amendments relating to 
improving mechanisms for trade mark 
and copyright enforcement 
   
Copyright Regulations 1969 
1  Regulations 21 to 22A 
Repeal the regulations, substitute: 
21  Restriction of importation of copyright material 
 (1) For paragraph 135(8)(c) of the Act, the CEO may direct a person 
who notifies the CEO under subsection 135(2) of the Act to give to 
the CEO information and evidence about the following: 
 (a) the subsistence of copyright in the material; 
 (b) the ownership of the copyright; 
 (c) if the person who objects is an agent for the owner of the 
copyright —the authority for the person to give the notice. 
 (2) The person must comply with the direction. 
Note: The definition of CEO is in section 134B of the Act. 
22  Action period 
  For the definition of action period  in section 134B of the Act, the 
period is 10 working days. 
22A  Claim period 
  For the definition of claim period  in section 134B of the Act, the 
period is 10 working days. 
22B  Claim for release of seized copies 
 (
1) For paragraph 135AEA(3)(a) of the Act, the claim must be in a 
form approved by the CEO. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) For paragraph 135AEA(3)(b) of the Act, the claim must include 
the following information: 
 (a) the importer’s full name, home or business address and 
address for service; 
 (b) a telephone number for the importer; 
 (c) the grounds for seeking the release of the seized copies; 
 (d) if the importer’s home or business address is not in Australia:  
 (i) the full name and the home or business address of a 
person who is the importer’s agent in Australia; and  
 (ii) an address for service for the person who is the 
importer’s agent in Australia; and  
 (iii) a telephone number for the person; and 
 (iv) information showing that the person agreed to be the 
importer’s agent; 
 (e) if a person or body other than the agent made arrangements 
on the importer’s be half for the seized copies to be brought to 
Australia: 
 (i) the full name, home or business address and address for 
service of the person or body; and 
 (ii) a telephone number for the person or body. 
Note: Examples of grounds for paragraph (c) are: 
(a) that the copies are not infringing copies; and 
(b) that the importation of the copies did not infringe copyright. 
Trade Marks Regulations 1995 
2  Regulations 13.1 and 13.2 
Repe
al the regulations, substitute: 
13.1A  Definition 
  In this Part, a reference to the Customs CEO  includes a reference 
to: 
 (a) for Norfolk Island —the Collector as defined in the Customs 
Act 1913 of Norfolk Island; and 
 (b) for Christmas Island —the Comptroller as defined in the 
Customs Act 1901 of Christmas Island; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) for the Cocos (Keeling) Islands —the Comptroller as defined 
in the Customs Act 1901 of the Cocos (Keeling) Islands. 
13.1  Action period 
  For the definition of action period  in section 6 of the Act, the 
period is 10 working days. 
13.2  Claim period 
  For the definition of claim period  in section 6 of the Act, the 
period is 10 working days. 
13.3  Notice of objection to importation prescribed document 
  For subsection 132(1) of the Act, a document that sets out the 
part
iculars of registration of the registered trade mark is prescribed. 
13.4  Notice of objection to importation —authorised users 
 (1) For paragraph 132(3)(b) of the Act, the period is 2 months from the 
day the request is made by the authorised user under 
subsection 132(2) of the Act. 
 (2) For paragraph 132(3)(e) of the Act, the authorised user must give 
to the Customs CEO documents that show: 
 (a)
 the authorised user has power to give a notice of objection 
under subsection 132(1) of the Act; and 
 (b) the authorised user has made the request; and 
 (c) if the authorised user gives to the Customs CEO the notice 
after the period mentioned in subregulation (1) has ended —
the period has ended. 
Note: Examples of documents for paragraph (2)(a) are: 
(a) an agreement between the registered owner of a trade mark, and 
the authorised user of the trade mark, that the authorised user of 
the trade mark is able to give notice of objection; and 
(b) a declaration by the registered owner that the authorised user of 
the trade mark is able to give notice of objection. 
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OPC50135 - 18/02/2013 5:04:48 PM 13.5  Claim for release of seized goods 
 (1) For paragraph 136(3)(a) of the Act, the claim must be in a form 
approved by the Customs CEO. 
 (2) For paragraph 136(3)(b) of the Act, the claim must include the 
following information: 
 (a) the desi gnated owner’s full name, home or business address 
and address for service; 
 (b) a telephone number for the designated owner; 
 (c) the grounds for seeking the release of the seized goods; 
 (d) if the designated owner’s home or business address is not in 
Australia: 
 (i) the full name and the home or business address of a 
person who is the designated owner’s agent in Australia; 
and 
 (ii) an address for service for the person who is the 
designated owner’s agent in Australia; and  
 (iii) a telephone number for the person; and 
 (iv) information showing that the person agreed to be the 
designated owner’s agent; 
 (e) if a person or body other than the agent made arrangements 
on the designated owner’s behalf for the seized goods to be 
brought to Australia: 
 (i) the full name, home or business address and address for 
service of the person or body; and 
 (ii) a telephone number for the person or body. 
Note: Examples of grounds for paragraph (c) are: 
(a) that the goods do not infringe the notified trade mark; and 
(b) that the importation of the goods does not infringe the notified 
trade mark. 
3  Regulations 13.3 to 13.6 
Renum
ber as regulations 13.6 to 13.10. 
4  Schedules 3, 4 and 5 
Repeal the Schedules, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 3—Modifications of Part 13 of the 
Act 
(Norfolk Island) 
   
1  After section 131 
Insert: 
131A  Definitions 
  In this Part: 
Administration  has the meaning given by the Norfolk Island Act 
1979. 
Administrator  has the meaning given by the Norfolk Island Act 
1979. 
Collector  means the Collector of Customs appointed under 
section 1B to  the Customs Act 1913  of Norfolk Island. 
designated owner , in relation to goods imported into Norfolk 
Island, means the person identified as the owner of the goods on 
the import entry form made in relation to the goods under 
section 4A of the Customs Act 1913  of Norfolk Island. 
2  Paragraph 133(1)(b) 
Omit “ Customs Act 1901 ”, substitute “ Customs Act 1913 of Norfolk 
Island ”. 
3  Section 133A 
Omit “or an officer of Customs (within the meaning of subsection  4(1) 
of the Customs Act 1901 )”. 
4  Paragraph 139(1)(b) 
Om
it “as the Customs CEO directs. ”, substitute “ by the Collector in 
accordance with any direction of the Executive Member who 
administers th e Customs Act 1913  of Norfolk Island. ”. 
5  Section 140 
O
mit “ of the Commonwealth ”, substitute “ in force in Norfolk Island ”. 
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OPC50135 - 18/02/2013 5:04:48 PM 6  Further amendments —Administration 
  The following provisions are amended by omitting each mention of 
“Commonwealth ” and substituting “ Administration ”: 
 (a) section 133; 
 (b) subsection 134(5); 
 (c) section 135; 
 (d) subsection 136A(1); 
 (e) section 136E; 
 (f) paragraph 137(3)(b); 
 (g) section 139, including the heading; 
 (h) section 142, including the heading. 
7  Further amendments —Collector 
  The following provisions are amended by omitting each mention of 
“Customs CEO ” and substituting “ Collector ”: 
 (a) sections 131 and 132; 
 (b) section 133, including the heading; 
 (c) sections 134 to 137; 
 (d) section 139, note; 
 (e) sections 140 to 143. 
8  Further amendments —Norfolk Island 
  The following provisions are amended by omitting each mention of 
“Australia ” and substituting “ Norfolk Island ”: 
 (a) section 131; 
 (b) subsection 133(1); 
 (c) paragraph 134(4)(a); 
 (d) subparagraph 136C(2)(b)(ii); 
 (e) section 143. 
9  Section 144 
Repeal the section. 
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 4—Modifications of Part 13 of the 
Act
 (Christmas Island) 
   
1  After section 131 
Insert: 
131A  Definitions 
  In this Part: 
Comptroller means the Comptroller of the Indian Ocean Territories 
Customs Service. 
designated owner , in relation to goods imported into Christmas 
Island, means the person identified as the owner of the goods on 
the entry made in relation to the goods under subsection 68(2) or 
(3) of the Customs Act 1901  of Christmas Island. 
2  Paragraph 133(1)(b) 
Af
ter “Customs Act 1901 ”, insert “ of Christmas Island ”. 
3  Section 133A 
After “ Customs Act 1901 ”, insert “ of Christmas Island ”. 
4  Section 140 
Omit “ of the Commonwealth ”, substitute “ in force in Christmas Island ”. 
5  Further amendments —Christmas Island 
  The following provisions are amended by omitting each mention of 
“Australia”  and inserting “Christmas Island” : 
 (a) section 131; 
 (b) subsection 133(1); 
 (c) paragraph 134(4)(a); 
 (d) subparagraph 136C(2)(b)(ii); 
 (e) section 143. 
6  Further amendments —Comptroller 
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OPC50135 - 18/02/2013 5:04:48 PM   The following provisions are amended by omitting each mention of 
“Customs CEO ” and inserting “Comptroller ”: 
 (a) sections 131 and 132; 
 (b) section 133, including the heading; 
 (c) sections 134 to 137; 
 (d) section 139, including the note; 
 (e) sections 140 to 143. 
7  Further amendments —Territory of Christmas Island 
  The following provisions are amended by omitting each mention of 
“Commonwealth ” and inserting “Territory of Christmas Island” : 
 (a) section 133; 
 (b) subsection 134(5); 
 (c) section 135; 
 (d) subsection 136A(1); 
 (e) section 136E; 
 (f) paragraph 137(3)(b); 
 (g) section 139, including the heading; 
 (h) section 142, including the heading. 
8  Section 144 
Repeal the section. 
Schedule 5—Modifications of Part 13 of the 
Act 
(Cocos (Keeling) Islands) 
   
1  After section 131 
Insert: 
131A  Definitions 
  In this Part: 
Comptroller means the Comptroller of the Indian Ocean Territories 
Customs Service. 
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OPC50135 - 18/02/2013 5:04:48 PM designated owner , in relation to goods imported into Christmas 
Island, means the person identified as the owner of the goods on 
the entry made in relation to the goods under subsection 68(2) or 
(3) of the Customs Act 1901  of Cocos (Keeling) Islands. 
2  Paragraph 133(1)(b) 
Af
ter “Customs Act 1901”, insert “ of the Cocos (Keeling) Islands ”. 
3  Section 133A 
After “ Customs Act 1901 ”, insert “ of the Cocos (Keeling) Islands ”. 
4  Section 140 
Omit “ of the Commonwealth ”, substitute “ in force in the Cocos 
(Keeling) Islands ”. 
5  Further amendments —the Cocos (Keeling) Islands 
  The following provisions are amended by omitting each mention of 
“Australia ” and inserting “the Cocos (Keeling) Islands” : 
 (a) section 131; 
 (b) subsection 133(1); 
 (c) paragraph 134(4)(a); 
 (d) subparagraph 136C(2)(b)(ii); 
 (e) section 143. 
6  Further amendments —Comptroller 
  The following provisions are amended by omitting each mention of 
“Customs CEO ” and inserting “Comptroller” : 
 (a) sections 131 to 132; 
 (b) section 133, including the heading; 
 (c) sections 134 to 137; 
 (d) section 139, including the note; 
 (e) sections 140 to 143. 
7  Further amendments —Cocos (Keeling) Islands 
  The following provisions are amended by omitting each mention of 
“Commonwealth ” and inserting “Cocos (Keeling) Islands ”: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) section 133; 
 (b) subsection 134(5); 
 (c) section 135; 
 (d) subsection 136A(1); 
 (e) section 136E; 
 (f) paragraph 137(3)(b); 
 (g) section 139, including the heading; 
 (h) section 142, including the heading. 
8  Section 144 
Repeal the section. 
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 6— Amendments relating to 
simplifying the IP system 
   
Designs Regulations 2004 
1  Regulation 1.05 
Repeal the regulation, substitute: 
1.05  Convention country 
  For the definition of Convention country  in subsection 5A(1) of 
the Act, the following countries are prescribed: 
 (a) a foreign country that is a signatory to the Paris Convention 
for the Protection of Industrial Property of 20 March 1883, as 
in force from time to time; 
 (b) a foreign country that is a full member of the World Trade 
Organization. 
Note 1: For signatories to the Paris Convention for the Protection of Industrial 
Property, see www.wipo.int. 
Note 2: For full members of the World Trade Organization, see www.wto.org. 
2  Subparagraph 5.04(c)(iii) 
After “ Federal Court ”, insert “ , the Federal Magistrates Court or the 
Federal Circuit Court of Australia ”. 
3  Regulations 11.22 and 11.23 
Repeal the regulations, substitute: 
11.22   Exercise of discretionary powers by Registrar 
 (1) The Registrar must give a person an opportunity to be heard before 
exercising a discretionary power under these Regulations adversely 
to the person. 
Note: See section 148 of the Act for a similar provision. 
 (2) For section 148 of the Act and subregulation (1), the Registrar 
must give the person an opportunity to be heard by: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) asking the person for written submissions; or 
 (b) notifying the person that, on request to the Registrar, the 
person may be heard by way of an oral hearing on a date, and 
at a time and place, determined by the Registrar; or 
 (c) notifying the person of the date, time and place of an oral 
hearing. 
 (3) The Registrar may exercise the discretionary power if the person: 
 (a) notifies the Registrar that the person does not want to be 
heard; or 
 (b) does not file written submissions if requested under 
subregulation 11.23(1); or 
 (c) does not attend an oral hearing if notified under 
subregulation 11.23(2). 
 (4) If the Registrar exercises discretionary power in any of the 
circumstances mentioned in subregulation (3), the Registrar must 
notify t he person of the Registrar’s decision. 
11.23   Written submissions and oral hearings 
Written submissions 
 (1) If the Registrar decides that a person may be heard by way of 
written submissions, the Registrar must: 
 (a) notify the person of the period in which the submissions must 
be filed (being a period of at least 10 business days); and 
 (b) decide the matter after considering the written submissions; 
and 
 (c) notify the person of the Registrar’s decision in relation to the 
exercise of the discretionary power. 
Oral hearings 
 (2) If the Registrar decides that a person may be heard by way of an 
oral hearing, the Registrar must give notice of the date, time and 
place of the hearing to the person at least 10 business days before 
the day the hearing is to begin. 
 (3) The Registrar may adjourn an oral hearing from time to time or 
from place to place by notifying the person . 
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OPC50135 - 18/02/2013 5:04:48 PM  (4) The Registrar may hold an oral hearing in which: 
 (a) a person appears in person; or 
 (b) a person participates by telephone or other means of 
telecommunications that the Registrar reasonably allows. 
 (5) In addition to the Registrar’s other powers, the Registrar may 
direct a person to provide a written summary of submissions. 
 (6) The Registrar must notify a person who appears at the hearing of 
the Registrar’s decision in relation to the exercise of the 
discretionary power. 
4  Schedule 1 
Repeal the Schedule. 
Patents Regulations 1991 
5  Regulation 1.4 
Repeal the regulation, substitute: 
1.4  Meaning of Convention country  
  For the definition of Convention country  in subsection 29B(5) of 
the Act, the following countries are prescribed: 
 (a) a foreign country that is a signatory to the Paris Convention 
for the Protection of Industrial Property of 20 March 1883, as 
in force from time to time; 
 (b) a foreign country that is a full member of the World Trade 
Organization. 
Note 1: For signatories to the Paris Convention for the Protection of Industrial 
Property, see www.wipo.int. 
Note 2: For full members of the World Trade Organization, see www.wto.org. 
6  Regulations 1.6 and 1.6A 
Repeal the regulations, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM 1.6  Secret use —prescribed period 
  For paragraph 9(e) of the Act, the period is 12 months after the first 
use of the invention that would, but for the application of 
paragraph 9(e), have constituted secret use. 
7  Regulations 2.2 and 2.3 
Repe
al the regulations, substitute: 
2.2  Information made publicly available —recognised exhibitions 
 (1) This regulation sets out: 
 (a) for paragraph 24(1)(a) of the Act —a circumstance in relation 
to information made publicly available by, or with the 
consent of, the nominated person, patentee or predecessor in 
title of the nominated person or patentee; and 
 (b) for subsection 24(1) of the Act —a period for making a 
complete application for an invention if the circumstance 
applies. 
Circumstance —invention shown, used or published at recognised 
exhibition 
 (2) The circumstance is that the information has been made publicly 
available because the invention was: 
 (a) shown or used at a recognised exhibition; or 
 (b) published during a recognised exhibition at which the 
invention was shown or used. 
Period 
 (3) The period for making a complete application for the invention is: 
 (a) if the complete application claims priority from a basic 
application made within 6 months of the day of the showing, 
use or publication —12 months from the day the basic 
application was made; or 
 (b) if the complete application is associated with a provisional 
application made within 6 months of the day of the showing, 
use or publication —12 months from the day the provisional 
application was made; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (c) otherwise —12 months from the day of the showing, use or 
publication. 
 (4) In this regulation: 
Paris Convention  means the Paris Convention for the Protection of 
Industrial Property of 20 March 1883, as in force for Australia on 
the commencing day. 
recognised exhibition  means: 
 (a) an official or officially recognised international exhibition 
within the meaning of Article 11 of the Paris Convention or 
Article 1 of the Convention relating to International 
Exhibitions done at Paris on 22 November 1928, as in force 
for Australia on the commencing day; or 
 (b) an international exhibition recognised by the Commissioner 
by a notice published in the Official Journal before the 
beginning of the exhibition. 
2.2A  Information made publicly available —learned societies 
 (1) This regulation sets out: 
 (a) for paragraph 24(1)(a) of the Act —a circumstance in relation 
to information made publicly available by, or with the 
consent of, the nominated person, patentee or predecessor in 
title of the nominated person or patentee; and 
 (b) for subsection 24(1) of the Act —a period for making a 
complete application for an invention if the circumstance 
applies. 
Circumstance —information read before learned society or 
published by or on behalf of learned society 
 (2) The circumstance is that the information has been made publicly 
available in a paper: 
 (a) read before a learned society; or 
 (b) published by or on behalf of a learned society. 
Period
 
 (3) The period for making a complete application for the invention is: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) if the complete application claims priority from a basic 
application made within 6 months of the day of the reading 
or publication —12 months from the day the basic application 
was made; or 
 (b) if the complete application is associated with a provisional 
application made within 6 months of the day of the reading 
or publication —12 months from the day the provisional 
application was made; or 
 (c) otherwise —12 months from the day of the reading or 
publication. 
2.2B  Information made publicly available —reasonable trial of 
invention 
 (1) This regulation sets out: 
 (a) for paragraph 24(1)(a) of the Act —a circumstance in relation 
to information made publicly available by, or with the 
consent of, the nominated person, patentee or predecessor in 
title of the nominated person or patentee; and 
 (b) for subsection 24(1) of the Act —a period for making a 
complete application for an invention if the circumstance 
applies. 
Circumstance —working of invention for reasonable trial 
 (2) The circumstance is that: 
 (a) the information has been made publicly available because the 
invention was worked in public; and 
 (b) the working of the invention was for the purposes of a 
reasonable trial of the invention; and 
 (c) because of the nature of the invention, it was reasonably 
necessary for the working to be in public. 
Period 
 (3) The period for making a complete application for the invention is: 
 (a) if the complete application claims priority from a basic 
application made within 12 months of the start of the public 
working of the invention —12 months from the day the basic 
application was made; or 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) if the complete application is associated with a provisional 
application made within 12 months of the start of the public 
working of the invention —12 months from the day the 
provisional application was made; or 
 (c) otherwise —12 months from the start of the public working of 
the invention. 
2.2C  Information made publicly available —other circumstances 
 (1) This regulation sets out: 
 (a) for paragraph 24(1)(a) of the Act —a circumstance in relation 
to information made publicly available by, or with the 
consent of, the nominated person, patentee or predecessor in 
title of the nominated person or patentee; and 
 (b) for subsection 24(1) of the Act —a period for making a 
complete application for an invention if the circumstance 
applies. 
Circumstance 
 (2) The circumstance is that the information has been made publicly 
available in circumstances other than the circumstances described 
in regulations 2.2, 2.2A and 2.2B. 
Period 
 (3) The period for making a complete application for the invention is 
12 months from the day the information was made publicly 
available. 
2.2D  Information made publicly available without consent —period 
  For subsection 24(1) of the Act, for information made publicly 
avai
lable in the circumstances mentioned in paragraph 24(1)(b) of 
the Act, the prescribed period for making a complete application 
for an invention is 12 months from the day the information was 
made publicly available. 
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OPC50135 - 18/02/2013 5:04:48 PM 2.3  Divisional applications —period 
 (1) For subsection 24(1) of the Act, this regulation applies to an 
invention if: 
 (a) the specification containing the claim in which the invention 
is defined was filed for a divisional application under 
section 79B or 79C of the Act; and 
 (b) the claim is entitled under regulation 3.13D or 3.13E to the 
priority date that it would have if the claim was in the 
specification filed with a previous application (the original 
application ); and 
 (c) a circumstance mentioned in regulations 2.2 to 2.2D applies; 
and 
 (d) the original application was filed in the period prescribed in 
the circumstance under regulations 2.2 to 2.2D. 
 (2) The prescribed period for making the divisional application is: 
 (a) if the divisional application was filed in the period mentioned 
in paragraph (1)(d) —that period; or 
 (b) otherwise —the period ending on the day the divisional 
application was made. 
8  Paragraphs 3.1(2)(a) and (b) 
Repeal the paragraphs. 
9  At the end of regulation 3.1A 
Add: 
 (2) For a PCT application, the applicant is taken to be the nominated 
person. 
10  Subregulation 3.2A(3) 
After “ standard patent ”, insert “ (other than a PCT application) ”. 
11  After regulation 3.2A 
Insert: 
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OPC50135 - 18/02/2013 5:04:48 PM 3.2AB  PCT application —title of specification 
 (1) The title of a specification for a PCT application is taken to be: 
 (a) the title approved by the ISA for the application under 
rule 44.2 of the PCT; or 
 (b) the title established by the ISA for the application under 
rule 37.2 of the PCT. 
 (2) For subregulation (1), if the title is in a language other than 
Engl
ish, the title is taken to be the English translation of the title. 
12  Paragraph 3.2B(1)(d) 
Omit “ 6A.1, 6A.2 or subregulation 8. 5(2),”, substitute “ 3.11, 6A.1 or 
6A.2, ”. 
13  After regulation 3.2B 
Inse
rt: 
3.2C  Specifications —formalities check for PCT application 
 (1) This regulation applies to a PCT application that complies with 
subsection 29A(5) of the Act. 
Note: This regulation was added on 15 April 2013. If the PCT application 
was filed before 15 April 2013, see subregulation (7). 
 (2) The applicant must: 
 (a) provide: 
 (i) an address for service in Australia at which a document 
under the Act or these Regulations may be given to the 
applicant personally, or to a person nominated as the 
applicant’s representative; or  
 (ii) another address for service in Australia to which it is 
practicable and reasonable for Australia Post, or a 
person acting for Australia Post, to deliver mail; and 
 (b) if a translation of the application is filed for 
subsection 29A(5) of the Act —file a certificate of 
verification for the translation. 
 (3) The PCT application must substantially comply with the 
requirements of Schedule 3.  
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OPC50135 - 18/02/2013 5:04:48 PM  (4) The Commissioner may, within one month from the date the PCT 
application complies with subsection 29A(5) of the Act, direct the 
appli
cant to do anything necessary to ensure that the application 
complies with the requirements mentioned in subregulations (2) 
and (3). 
 (5) The PCT application lapses if: 
 (a) the applicant has been given a direction under subregulation 
(4); and 
 (b) the applicant has not complied with the direction within 2 
months of the date of the direction. 
 (6) If the PCT application lapses under subregulation (5), the 
Commissioner must: 
 (a) advertise that fact in the Official Journal ; and 
 (b) tell the applicant that the PCT application has lapsed. 
 (7) If the PCT application was filed before 15 April 2013: 
 (a) a reference in this regulation to subsection 29A(5) of the Act: 
 (i) is taken to be a reference to subsection 89(3) of the Act, 
as in force immediately before 15 April 2013; and 
 (ii) if a translation of a PCT application is required to be 
filed—is taken not to include the requirement to file a 
rel
ated certificate of verification; and 
 (b) for the purposes of the reference to subsection 89(3) of the 
Act, as in force immediately before 15 April 2013, 
paragraph 8.2(3)(c) of these Regulations, as in force 
immediately before 15 April 2013: 
 (i) i
s taken to apply in relation to the PCT application; and 
 (ii) is taken not to include the requirement to file a related 
certificate of verification; and 
 (iii) is taken not to include the requirement to file a 
document setting out an address for service of 
documents in Australia. 
14  Regulation 3.5 (heading) 
Repeal the heading, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM 3.5  Filing date —patent applications other than PCT applications 
15  Subregulation 3.5( 1) 
After “ patent application ”, insert “ (other than a PCT application) ”. 
16  After regulation 3.5 
Insert: 
3.5AA  Filing date —PCT applications 
  For section 30 of the Act, the filing date of a PCT application is: 
 (a) the international filing date; or 
 (b) if the Commissioner has treated another date as the 
international filing date under Rule 82ter of the PCT —that 
date; or 
 (c) if section 10 of the Act applies to the application —the date 
taken to have been given as the international filing date under 
that section. 
17  Subregulation 3.5A(1) 
After “ patent application ”, insert “ (other than a PCT application) ”. 
18  After regulation 3.5A 
Insert: 
3.5AB  PCT applications —international applications taken to be 
applications under the Act 
 (1) This regulation applies to an international application that specifies 
Australia as a designated State under Article 4(1)(ii) of the PCT if: 
 (a) the receiving Office has declared that the international 
application is taken to be withdrawn; or 
 (b) the International Bureau has made a finding under Article 
12(3) of the PCT. 
 (2) The international application is taken to be a PCT application, as if 
a declaration or finding had not been made, if: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) the applicant has made a request referred to in Article 
25(1)(a) of the PCT within the time limit specified in 
Rule 51.1 of the PCT; and 
 (b) the Commissioner has received, within the time limit 
specified in Rule 51.3 of the PCT: 
 (i) the fees prescribed for paragraph 29A(5)(b) of the Act; 
and 
 (ii) if the application is not in English —a translation of the 
application into English; and 
 (c) the Commissioner believes on reasonable grounds that: 
 (i) the declaration was the result of an error or omission by 
the receiving Office; or 
 (ii) the finding was the result of an error or omission by the 
International Bureau. 
3.5AC  PCT applications —amendment 
 (1) For subsection 29A(3) of the Act, this regulation sets out the 
circumstances and manner in which, and the day on which, a 
specification of a PCT application is taken to be amended. 
Translation of application into English 
 (2) If paragraph 29A(5)(a) of the Act applies to the PCT application: 
 (a) the description, drawings and claims contained in the 
application are taken to have been amended by substituting 
the description, drawings and claims in the translation; and 
 (b) the amendment is taken to have occurred on the day the 
translation was filed. 
Application amended under Article 19 of PCT 
 (3) If: 
 (a) a PCT application was amended under Article 19 of the PCT; 
and 
 (b) the application was amended before the applicant met the 
requirements of subsection 29A(5) of the Act; 
the description, drawings and claims contained in the application 
are to be taken to have been amended on the day the amendment 
was made. 
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OPC50135 - 18/02/2013 5:04:48 PM Application rectified under Rule 91 of PCT 
 (4) If: 
 (a) a PCT application was rectified under Rule 91 of the PCT; 
and 
 (b) the rectification was made before the applicant met the 
requirements of subsection 29A(5) of the Act; 
the description, drawings and claims contained in the application 
are to be taken to have been amended on the day the rectification 
was effective, unless the Commissioner disregards the rectification 
under Rule 91.3(f) of the PCT. 
Application amended under Article 34 of PCT 
 (5) If: 
 (a) a PCT application in respect of which Australia has been 
elected under Chapter II of the PCT has been amended under 
Article 34 of the PCT; and 
 (b) an international preliminary examination report is established 
before the applicant meets the requirements of 
subsection 29A(5) of the Act; 
the description, drawings and claims contained in the application 
are taken to have been amended on the day the amendment was 
made. 
 (6) However, subregulation (5) does not apply if: 
 (a) the Commissioner has notified the applicant under 
regulation 3.17C or paragraph 10.2(1)(d); and 
 (b) the applicant: 
 (i) provides the advice mentioned in paragraph 3.17B(2)(b) 
or subparagraph 10.2(3)(c)(ii); or 
 (ii) elects under paragraph 3.17B(2)(c) or 
subparagraph 10.2(3)(c)(iii) to abandon any 
amendments that may have been made under Article 34 
of the PCT. 
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OPC50135 - 18/02/2013 5:04:48 PM Indications under Rule 13bis.4 of the PCT 
 (7) If an indication in relation to a deposited micro-organism is 
furnished according to Rule 13bis.4 of  the PCT in relation to a PCT 
application: 
 (a) the description contained in the application is taken to have 
been amended to include that indication; a nd 
 (b) the amendment is taken to have occurred on the day that 
indication is furnished to the International Bureau. 
3.5AD  PCT applications —prescribed requirements 
  For subsection 29A(4) of the Act, the following requirements are 
pres
cribed: 
 (a) the requirements of subsection 29(4) of the Act; 
 (b) subregulation 3.1(1); 
 (c) subregulation 3.2A(1); 
 (d) paragraphs 3.2A(2)(a) and (b). 
3.5AE  PCT applications —prescribed period 
 (1) For subsection 29A(5) of the Act, the prescribed period is 31 
months after the priority date of the application. 
 (2) In this regulation: 
priority date has the same meaning as in the PCT. 
3.5AF  PCT applications —translations and prescribed documents 
Translations published under Article 21 of PCT 
 (1) For paragraph 29A(5)(a) of the Act, subregulation (2) applies if: 
 (a) a PCT application is not filed in English; and 
 (b) the PCT application has been published in English under 
Article 21 of the PCT; and 
 (c) a translation of the application into English was not filed 
before the date of publication under Article 21 of the PCT. 
 (2) The publication under Article 21 of the PCT is taken: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) to be the translation mentioned in paragraph 29A(5)(a) of the 
Act; and 
 (b) to have been filed within the prescribed period; and 
 (c) to have been verified in accordance with these Regulations. 
Copy of application 
 (3) For paragraph 29A(5)(b) of the Act, if a PCT application has not 
been published under Article 21 of the PCT, a copy of the 
application is a prescribed document. 
 (4) In this regulation: 
PCT application  includes: 
 (a) an amendment under Article 19 or 34 of the PCT; and 
 (b) a rectification under Rule 91 of the PCT. 
3.5AG  Convention application —prescribed particulars 
 (1) For paragraph 29B(4)(a) of the Act, the following particulars are 
prescribed in relation to a relevant basic application: 
 (a) the country in which the application was made; 
 (b) the number allocated to the application by the foreign patent 
office of the Convention country in which the application 
was made; 
 (c) the date the application was made. 
 (2) A reference to a country or a Convention country in subregulation 
(1) includes an intergovernmental authority to the extent that 
Rule 4.10 of the PCT permits for a PCT application. 
Note: An example for subregulation (2) is that the PCT allows the European 
Patent Office to be specified for a regional application instead of a 
particular Convention country. 
19  Regulation 3.5B 
After “ sub-office of the Patent Office ”, insert “ (if any) ”. 
20  After regulation 3.10 
Insert: 
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OPC50135 - 18/02/2013 5:04:48 PM 3.11  Prescribed period —making Convention application 
  For subsections 29B(2) and 38(1A) of the Act, the prescribed 
period is 12 months from the day a basic application is first made 
in a Convention country for the invention. 
21  Regulation 3.14 
Omit “ If subsection 114( 1)”, substitute “ If section 114 ”. 
22  Paragraph 3.14( a) 
Omit “ subsection 89( 4) or (5) ”, substitute “ subsection 29A(3) ”. 
23  Paragraph 3.14( b) 
Omit “ subsection 114(1) ”, substitute “ subparagraph 114(1)(c)(ii) ”. 
24  After regulation 3.14B 
Insert: 
3.14C  Priority dates —Convention applications and PCT 
applications: prescribed period for disregarding earlier 
applications 
  For paragraph 43(5)(b) of the Act, the period of more than 12 
months before the filing of the Convention application or PCT 
application is prescribed. 
3.14D  Prescribed documents: basic application 
 (1) For subsection 43AA(1) of the Act, the following documents that 
relate to a basic application are prescribed: 
 (a) a copy of the specification filed for, and at the same time as, 
the basic application; 
 (b) a copy of any other document filed for the basic application, 
whether filed at the same time as, or after, the basic 
application is filed; 
 (c) a document mentioned in paragraph (a) or (b) that has been 
certified by the competent authority of the Convention 
country in which the basic application was made; 
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OPC50135 - 18/02/2013 5:04:48 PM  (d) if the application relates to a micro-organism —a copy of a 
receipt for the deposit of the micro-organism issued by a 
prescribed depository institution; 
 (e) if a document mentioned in paragraphs (a) to (d) is not in 
English —a translation of the document into English and a 
certificate of verification of the translation. 
 (
2) For subsection 43AA(4) of the Act, if the Commissioner requires 
that a prescribed document relating to a basic application be made 
available to the Commissioner: 
 (a) the prescribed means for making the document available are: 
 (i) filing the document with the Australian Patent Office; or 
 (ii) making the document available through an approved 
digital library; and 
 (b) the prescribed period for making the document available is 3 
months from the day the Commissioner requires the 
document be made available. 
 (3) However, if the Commissioner is satisfied that: 
 (a) a document was made available for inspection by the 
Commissioner in an approved digital library within the 
period mentioned in paragraph (2)(b); and 
 (b) the document is no longer available for inspection; 
the prescribed period is 2 months after the day the Commissioner 
notifies the applicant or patentee that the Commissioner has not 
been able to inspect the document in the approved digital library. 
25  Regulation 3.15 (heading) 
Repe
al the heading, substitute: 
3.15  Requirements of request for examination 
26  At the end of regulation 3.15 
Add: 
 (3) An applicant of a PCT application may not make a request for the 
examination of the patent request and complete specification until 
the applicant has complied with the requirements of 
subsection 29A(5) of the Act. 
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OPC50135 - 18/02/2013 5:04:48 PM 27  Subregulation 3.16( 2) 
Omit “ 6 months ”, substitute “ 2 months ”. 
28  Regulations 3.17A and 3.17B 
Repeal the regulations, substitute: 
3.17A  PCT applications —Commissioner not to give certain 
directions 
 (1) This regulation applies to a PCT application that is treated as an 
application for a standard patent under the Act. 
 (2) The Commissioner must not give a direction under section 44 of 
the Act unless the applicant has complied with the requirements of 
subsection 29A(5) of the Act. 
3.17B  PCT applications —examination requirements 
 (1) For subsection 45(1A) of the Act, this regulation prescribes 
requirements for a PCT application. 
 (2) The requirements are that the applicant must: 
 (a) give a copy of the international preliminary examination 
report to the Commissioner; or 
 (b) advise that: 
 (i) no demand was made under Article 31 of the PCT; or 
 (ii) no amendments were made under Article 34 of the PCT; 
or 
 (iii) the demand was made under Article 31 of the PCT, or 
the international preliminary examination report was 
established, after the applicant complied with the 
requirements of subsection 29A(5) of the Act; or 
 (c) elect to abandon any amendments that may have been made 
under Article 34 of the PCT. 
 (3) However, subregulation (2) applies only if: 
 (a) each of the following applies: 
 (i) the applicant demanded an international preliminary 
examination under Article 31 of the PCT before 
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OPC50135 - 18/02/2013 5:04:48 PM complying with the requirements of subsection 29A(5) 
of the Act; 
 (ii) at least 3 months after the applicant complied with the 
requirements of subsection 29A(5) of the Act, the 
Commissioner asks for a copy of the international 
preliminary examination report from the International 
Bureau; 
 (iii) the International Bureau advises that the international 
preliminary examination report is not available; or 
 (b) both of the following apply: 
 (i) the applicant asks for the examination to be expedited 
under subregulation 3.17(2); 
 (ii) a copy of an international preliminary examination 
report relating to the application has not been provided 
to the Commissioner. 
Note: Under subparagraph 3.5AC(9) (b)(ii), if the applicant provides the 
advice, or makes the election, mentioned in paragraph (2) (b) or (c), 
any amendments made under Article 34 of the PCT are not taken to be 
included in the application. 
 (4) In this regulation: 
international preliminary examination report  has the same 
meaning as it has in the PCT. 
3.17C  PCT applications —notice if examination declined 
  If the Commissioner declines to examine a request and 
specification under subsection 45(1A) of the Act, the 
Commissioner must notify the applicant and ask the applicant to 
meet the requirements in subregulation 3.17B(2). 
29  Subregulation 3.18(2) 
Omit “ the purposes of paragraph 45(1 )(d) or 48(1)( c)”, substitute 
“paragraph 45(1)(d) ”. 
30  Paragraph 3.18(2)(a) 
Repeal the paragraph, substitute: 
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OPC50135 - 18/02/2013 5:04:48 PM  (a) whether, to the best of the Commissioner’s knowledge, the 
request and specification comply with the following 
provisions of the Act: 
 (i) section 15 (Who may be granted a patent?); 
 (ii) section 29 (Application for patent —general rules); 
 (iii) section 29B (Applications for patents —special rules for 
Convention applications); 
 (iv) section 38 (Time for making complete application); 
 (v) section 79B (Divisional applications prior to grant of 
patent); 
 (vi) section 81 (Grant of patent of addition); 
31  Paragraph 3.18(2)(f) 
Repeal the paragraph, substitute: 
 (f) for a PCT application —whether, to the best of the 
Commissioner’s knowledge, the application complies with 
subregulations 3.2C(2) and (3). 
32  Subregulation 3.18(3) 
Repeal the subregulation. 
33  Subregulation 3.18(4) 
Om
it “or 48”.  
34  Subregulation 3.19(3) 
Omit “or 48”.  
35  Regulations 3.20 and 3.21 
Repeal the regulations. 
36  Regulation 4.1 
Omit “ the purposes of section 53 ”, substitute “ subsection 53(1) ”. 
37  Paragraph 4.1(f) 
Repeal the paragraph, substitute: 
 (f) particulars of priority documents. 
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OPC50135 - 18/02/2013 5:04:48 PM 38  Paragraphs 4.3(2)(b) and (c) 
Repeal the paragraphs, substitute: 
 (b) a document that the Commissioner has reasonable grounds 
for believing should not be open to public inspection. 
39  At the end of Chapter 4 
Add: 
4.4  Publication and inspection of PCT applications 
 (1) For subsection 56A(1) of the Act, a PCT application is taken to 
have become open to public inspection, and to have been published 
in Australia: 
 (a) if a notice in relation to the application is published under 
subregulation (3) —on the day the notice is published; or 
 (b) if subregulation (5) applies —on the day the application is 
published under Article 21 of the PCT. 
 (2) Subregulation (3) applies to a PCT application: 
 (a) that has not lapsed, or been withdrawn or refused; and 
 (b) for which the applicant has complied with subsection 29A(5) 
of the Act before the end of 18 months after the priority date 
of the application. 
 (3) The Commissioner must publish a notice in the Official Journal 
stating that the PCT application is open to public inspection: 
 (a) if the applicant asks the Commissioner in writing to publish 
the notice; or 
 (b) in any case —as soon as practicable after the end of 18 
mont
hs after the priority date of the application. 
 (4) A request for publication under subregulation (3) must be in the 
approved form. 
 (5) The PCT application is open to public inspection if: 
 (a) the applicant does not comply with subsection 29A(5) of the 
Act within 18 months after the priority date of the 
application; and 
 (b) the application is published under Article 21 of the PCT. 
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OPC50135 - 18/02/2013 5:04:48 PM  (6) The following documents are open for inspection if a notice is 
published under subregulation (3) or if subregulation (5) applies: 
 (a) a copy of the relevant application; 
 (b) all documents in the possession of the Patent Office, other 
than those mentioned in subregulation (7), that are associated 
with: 
 (i) the application; or 
 (ii) any provisional application from which the application 
claims priority under Article 8 of the PCT. 
 (7) Subregulation (6) does not apply to the following documents: 
 (a) a document that would be privileged from production in legal 
proceedings on the ground of legal professional privilege; 
 (b) a document mentioned in subregulation 4.3(2). 
 (8) In this regulation: 
priority date  has the same meaning as in the PCT. 
40  After regulation 6.1 
Insert: 
6.1A  Prescribed particulars —grant of standard patent 
  For subsection 61(1) of the Act, the following particulars are 
pres
cribed: 
 (a) the date the patent is granted by the Commissioner; 
 (b) any other particulars of the grant that the Commissioner 
considers appropriate. 
41  After regulation 6.2 
Insert: 
6.2A  Prescribed particulars —grant of innovation patent 
  For subsection 62(1) of the Act, the following particulars are 
pres
cribed: 
 (a) the date the innovation patent is granted by the 
Commissioner; 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) any other particulars of the grant that the Commissioner 
considers appropriate. 
42  Subregulation 6.3(10) 
Omit “ section 94”, substitute “ subsections 29B(1) and (2) ”. 
43  At the end of regulation 6.3 
Add: 
 (11) If a PCT application claims the priority of an earlier application 
under Article 8 of the PCT, and a circumstance mentioned in an 
item of the following table applies, the date of the patent is the date 
12 months from the date of making the first application mentioned 
in the item. 
Circumstances  
Item  Column 1  
The earlier application was…  Column 2  
and:  
1 an application made in Australia 
more than 12 months before the 
international filing date of the PCT 
application  both of the following apply:  
(a) a receiving Office has restored 
priority under Rule  26bis.3 of the 
PCT;  
(b) the restored priority has not been  
found to be ineffective by the 
Commissioner or a prescribed 
court under Rule  49ter.1 of the 
PCT 
2 an application made in Australia 
more than 12 months before the 
international filing date of the PCT 
application  the Commissioner has restored 
priority under Rule  49ter.2 of the 
PCT 
3 an application made in Australia 
more than 12 months before the 
international filing date of the PCT 
application  the Commissioner has granted an 
extension of time under section  223 
of the Act that has the effect of 
restoring a right of priority  
4 a basic application made more than 
12 months before the international 
filing date of the PCT application, 
being the first application made in a 
Convention country for the both of the following apply:  
(a) a receivi ng Office has restored 
priority under Rule  26bis.3 of the 
PCT;  
(b) the restored priority has not been 
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OPC50135 - 18/02/2013 5:04:48 PM Circumstances  
Item  Column 1  
The earlier application was…  Column 2  
and:  
invention  found to be ineffective by the 
Commissioner or a prescribed 
court under Rule  49ter.1 of the 
PCT 
5 a basic application made more than 
12 months before the  international 
filing date of the PCT application, 
being the first application made in a 
Convention country for the 
invention  the Commissioner has restored 
priority under Rule  49ter.2 of the 
PCT 
6 a basic application made more than 
12 months before the international 
filing date of the PCT application, 
being the first application made in a 
Convention country for the 
invention  the Commissioner has granted an 
extension of time under section  223 
of the Act that has the effect of 
restoring a right of priority  
44  Regulation 6.4 
Repeal the regulation. 
45  Chapter 8 
Repeal the Chapter. 
46  Regulations 9A.2A and 9A.2B 
Repeal the regulations. 
47  Paragraphs 9A.4(d) and (e) 
Repeal the paragraphs, substitute: 
 (d) if the Commissioner requires a document to be made 
available under subsection 43AA(4) of the Act —5 months 
from the date the requirement is made; 
 (e) if: 
 (i) the Commissioner has informed the patentee of a notice 
under subsection 28(1) of the Act; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (ii) a ground for revocation is raised based on information 
in the notice; 
  3 months from the date of the report that first mentions the 
ground for revocation; 
 (f) if: 
 (i) the Commissioner gives the applicant an opportunity to 
be heard in relation to a report under section 101B of 
the Ac
t or regulation 10.2 by: 
 (A
) notifying the applicant in writing of the date by 
which written submissions must be filed; or 
 (B) notifying the applicant in writing of the date, 
time and place of an oral hearing; and 
 (ii) the Commissioner makes a decision in writing in 
relation to the report; 
  3 months from the date the decision is made; 
 (g) if the Commissioner revokes a certificate of examination 
under section 101EA of the Act —3 months from the date the 
decision to revoke is made. 
48  After subregulation 10.1(1) 
Insert: 
 (1AA) However, an applicant of a PCT application may not ask the 
Commissioner for leave to amend until the applicant has complied 
with the requirements of subsection 29A(5) of the Act. 
49  Paragraph 10.2(1)(d) 
Repeal the paragraph, substitute: 
 (d) notify the applicant of that fact; and 
50  Sub-subparagraph 10.2(3)(c)(ii)(C) 
Omit “ subsection 89( 3)”, substitute “subsection 29A(5) ”. 
51  Subparagraph 10.2(3)(c)(iii) (note) 
Repeal the note, substitute: 
Note: If the applicant provides the advice mentioned in subparagraph (c)(ii), 
or makes the election mentioned in subparagraph (c)(iii), any 
amendments made under Article 34 of the PCT are not taken to be 
included in the application. 
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OPC50135 - 18/02/2013 5:04:48 PM 52  Paragraph 10.5(1)(b) 
Omit “ section 45 or 48 ”, substitute “ section 45 ”. 
53  A
fter subregulation 10.6A 
Insert: 
10.6B  Revocation of grant of leave 
 (1) A grant of leave to amend a patent request, complete specification 
or other filed document under regulation 10.5 is revoked if: 
 (a) leave to amend was granted at the same time as the 
acceptance of the patent request and complete specification 
under subsection 49(1) of the Act; and 
 (b) acceptance of the patent request and complete specification is 
later revoked under section 50A of the Act. 
 (2) A grant of leave to amend a patent request, complete specification 
or other filed document under regulation 10.5 is revoked if: 
 (a) leave to amend was granted at the same time as the decision 
mentioned in paragraph 101E(a) of the Act was made; and 
 (b) the certificate of examination issued in relation to the patent 
is later revoked under subsection 101EA(1) of the Act. 
 (3) The Commissioner may revoke a grant of leave to amend a patent 
request, complete specification or other filed document under 
regulation 10.5 if the Commissioner is satisfied that: 
 (a) leave to amend should not have been granted, taking into 
account all of the circumstances that existed when leave was 
granted (whether or not the Commissioner knew the 
circumstances existed); and 
 (b) it is reasonable to revoke the grant and allowance of the 
amendmen t(if applicable), taking into account all of the 
circumstances; and 
 (c) there are no relevant proceedings pending. 
 (4) If leave to amend a patent request, complete specification or other 
filed document under regulation 10.5 is revoked (whether 
automatically or by the Commissioner): 
 (a) leave to amend is taken to never have been granted; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) if allowed under regulation 10.6, the amendment is taken not 
to have been allowed; and 
 (c) the Commissioner must continue to examine and report on 
the amendment in accordance with subregulation 10.2(1); 
and 
 (d) regulations 10.5 and 10.6 continue to apply in relation to the 
amendment. 
54  Regulation 10.7 
Repeal the regulation, substitute: 
10.7  Rectification of Register 
 (1) A person applying for rectification of the Register under 
section 191A of the Act must do so in the approved form. 
 (2) The Commissioner: 
 (a) may seek further information from any person for the 
purpose of considering the application; and 
 (b) is not required to consider the application while seeking the 
further information. 
 (3) The Commissioner must publish a notice of the rectification 
request in the Official Journal  unless the rectification: 
 (a) relates to an address included in the Register; or 
 (b) relates to a name included in the Register and does not relate 
to a change of identity; or 
 (c) relates to the title of an invention included in the Register; or 
 (d) is to correct an obvious mistake made in the Register; or 
 (e)
 does not materially alter the meaning or scope of an entry in 
the Register. 
 (4) However, the Commissioner is not required to publish a notice 
under subregulation (3) if the Commissioner is satisfied that the 
rectification should not be made. 
 (5) If the Commissioner publishes a notice under subregulation (3), the 
Commissioner must not rectify the Register until the later of: 
 (a) 2 months after publishing the notice; and 
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OPC50135 - 18/02/2013 5:04:48 PM  (b) if a person requests to be heard in relation to the rectification 
request —after the person has been heard. 
55  Regulation 11.1 
Omit “ specified in Schedule 4”, substitute “ m entioned in 
regulation 1.4”.  
56  Subregulation 12.1( 1) 
Omit “ sealing ”, substitute “granting ”. 
57  After regulation 13.1B 
Insert: 
13.1C  PCT applications —prescribed circumstances in which 
application may be withdrawn or taken to be withdrawn 
 (1) For subsection 141(2) of the Act, a PCT application may be 
withdrawn if the conditions mentioned in subsection 141(1) of the 
Act are met. 
 (2) For subsection 141(2) of the Act, a PCT application is taken to be 
withdrawn if Article 11(3) of the PCT ceases to have effect in 
Australia in relation to the PCT application under Article 24(1)(i) 
of the PCT. 
58  Regulation 13.2 
Repeal the regulation. 
59  Paragraphs 13.4(1)(a) and (b) 
Repeal the paragraphs, substitute: 
 (a) if examination of the patent request and complete 
specification is requested before 15 April 2013 —21 months 
from the date of the first report (if any) under section 45 of 
the Act; 
 (b) if examination is requested on or after 15 April 2013 —12 
months from the date of the first report (if any) under 
section 45 of the Act; 
60  Paragraph 13.4(1)(c) 
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OPC50135 - 18/02/2013 5:04:48 PM Repeal the paragraph. 
61  Subparagraph 13.4(1)(f)(ii) 
Repeal the subparagraph, substitute: 
 (ii) the Commissioner has made a declaration under 
paragraph 36(1)(c) of the Act; 
62  Paragraph 13.4(1)(g) 
Repeal the paragraph, substitute: 
 (g) subject to subregulation (3), if: 
 (i) the Commissioner gives the applicant an opportunity to 
be heard in relation to a report under section 45 of the 
Act
 or regulation 10.2 by: 
 (A) notifying the applicant in writing of the date by 
which written submissions must be filed; or 
 (B) notifying the applicant in writing of the date, 
time and place of an oral hearing; and 
 (ii) the Commissioner makes a decision in writing in 
relation to the report; 
  3 months from the date the decision is made; 
 (ga) subject to subregulation (3), if the Commissioner revokes an 
acceptance under subsection 50A(1) of the Act —3 months 
from the date the decision to revoke is made; 
63  Paragraph 13.4(1)(k) 
Repeal the paragraph, substitute: 
 (k) if the Commissioner requires a document to be made 
available under subsection 43AA(4) of the Act —the period 
of 5 months from the date the requirement is made; 
64  Subregulation 13.4(3) 
Omit “ or (f) or subparagraph (1 )(g)(iii)”, substitute “ , (f), (g) or (ga) ”. 
65  After regulation 13.5 
Insert: 
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OPC50135 - 18/02/2013 5:04:48 PM 13.5A  PCT application —prescribed circumstances for lapsing of 
application 
 (1) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT 
application lapses is that the applicant has not met the requirements 
of subsection 29A(5) of the Act within the prescribed period for 
that subsection. 
 (2) For paragraph 142(2)(f) of the Act, a circumstance in which a PCT 
application lapses is that the effect of the international application 
under Article 11(3) of the PCT ceases in Australia under Article 
24(1)(ii) of the PCT before the requirements of subsection 29A(5) 
of t
he Act have been met. 
66  Subregulation 22.2(4) 
Omit “ paragraph 89(3)( b)”, substitute “ p aragraph 29A(5)(b) ”. 
67  Regulation 22.2E 
Repeal the regulation. 
68  Paragraph 22.2F(1)(a) 
Omit “ , 22.2D or 22.2E ”, substitute “or 22.2D ”. 
69  Paragraph 22.10AA(b) 
Omit “ Patent Office ”, substitute “ Patent Office (if any) ”. 
70  Regulation 22.10AA (note) 
Omit “ of the Patent Office ”, substitute “ of the Patent Office (if any) ”. 
71  Subregulation 22.10AB(1) 
Omit “ of the Patent Office ”, substitute “ of the Patent Office (if any) ”. 
72  Regulation 22.15 
Repeal the regulation, substitute: 
22.15   Documents in English and English translations 
 (1) An abstract that is filed must be in English. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) A document required to be in an approved form that is filed must 
be in English. 
 (3) If any other document is filed: 
 (a) the document must be in English; or 
 (b) the document must be filed with: 
 (i) a translation of the document into English; and 
 (ii) a related certificate of verification. 
 (4) However, this regulation does not apply to documents relating to a 
basic application that are prescribed under subsection 43AA(1) of 
the Act. 
Note: For a list of these documents, see subregulation 3.14B(1). 
73  Subregulation 22.16(2) 
Omit “ Schedule 3”, substitute “ regulation 22.15 or Schedule 3, ”.  
74
  Paragraph 22.16(2)(a) 
Repeal the paragraph, substitute: 
 (a) as not having been filed and notify the person from whom it 
was received, including in the notification a statement 
indicating how the document or form does not so comply or 
accord; or 
75  Subregulation 22.16(3) 
Repeal the subregulation. 
76  Subregulation 22.16(4) 
Omit “ 3 months ”, substitute “ 2 months ”. 
77  Regulations 22.22 and 22.23 
Repeal the regulations, substitute: 
22.22   Exercise of discretionary powers by Commissioner 
 (1) The Commissioner must give a person an opportunity to be heard 
before exercising a discretionary power under the Act or these 
Regulations adversely to the person. 
Note: See section 216 of the Act for a similar provision. 
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OPC50135 - 18/02/2013 5:04:48 PM  (2) The Commissioner must give the person an opportunity to be heard 
by: 
 (a) asking the person for written submissions; or 
 (b) notifying the person that, on request to the Commissioner, 
the person may be heard by way of an oral hearing on a date, 
and at a time and place, determined by the Commissioner; or 
 (c) notifying the person of the date, time and place of an oral 
hearing. 
 (3) The Commissioner may exercise the discretionary power if the 
person: 
 (a) notifies the Commissioner that the person does not want to be 
heard; or 
 (b) does not file written submissions if requested under 
subregulation 22.23(1); or 
 (c) does not attend an oral hearing if notified under 
subregulation 22.23(2). 
 (4) If the Commissioner exercises discretionary power in any of the 
circumstances mentioned in subregulation (3), the Commissioner 
must notify the person of the Commissioner’s decision.  
22.23   Written submissions and oral hearings 
Written submissions 
 (1) If the Commissioner decides that a person may be heard by way of 
written submissions, the Commissioner must: 
 (a) notify the person of the period in which the submissions must 
be filed (being at least 10 business days); and 
 (b) determine the matter after considering the written 
submissions; and 
 (c) not ify the person of the Commissioner’s decision in relation 
to the exercise of the discretionary power. 
Oral hearings 
 (2) If the Commissioner decides that a person may be heard by way of 
an oral hearing, the Commissioner must give notice of the date, 
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OPC50135 - 18/02/2013 5:04:48 PM time and place of the hearing, to the person, at least 10 business 
days before the day the hearing is to begin. 
 (3) The Commissioner may adjourn an oral hearing from time to time 
or from place to place by notifying the person . 
 (4) The Commissioner may hold an oral hearing in which: 
 (a) a person appears in person; or 
 (b) a person participates by telephone or other means of 
telecommunications that the Commissioner reasonably 
allows. 
 (5) In addition to the Commissioner’s other powers, the Commissioner 
may direct a person to provide a written summary of submissions. 
 (6) The Commissioner must notify a person who appears at the hearing 
of the Commissioner’s decision in relation to the exercise of the 
discretionary power. 
78  After regulation 22.26 
Insert: 
22.27  Documents not to infringe copyright —prescribed documents 
 (1) For paragraph 226(2)(c) of the Act, the following documents are 
prescribed: 
 (a) a document open to public inspection under Chapter 4 of the 
Act; 
 (b) a document open to public inspection under these 
Regulations. 
 (2) However, a journal, book or catalogue is not prescribed if: 
 (a) it is provided for prosecution, examination or proceedings in 
relation to a patent application, or subsequent patent; and 
 (b) a right subsisting in the journal, book or catalogue under the 
Copyright Act 1968 is held by a party other than the patent 
applicant, patentee or another person who has filed a 
document for the application or patent. 
79  Schedules 1, 1A, 2 and 2A 
Repeal the Schedules. 
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OPC50135 - 18/02/2013 5:04:48 PM 80  Schedule 3 (heading) 
Repeal the heading, substitute: 
Schedule 3—Formal requirements for 
documents
 to be filed 
81  Schedule 4 
Repeal the Schedule. 
82  Part 2 of Schedule 7 (item 214) 
Repeal the item, substitute: 
214 Filing an application or request under section  17, 32 or 
36, or subsection  191A(2) of the Act  $600  
83  Part 2 of Schedule 7 (item 214A) 
Omit “ 89(3)(b)”, substitute “29A(5)(b) ”. 
84  Part 2 of Schedule 7 (item 221) 
Repeal the item. 
85  Part 2 of Schedule 7 (item 224) 
After “ amend ”, insert “ a complete specification relating to ”. 
86  Item 232 of Schedule 7 
Repeal the item. 
Trade Marks Regulations 1995 
87  Paragraph 4.4(6)(b) 
After “ sub-offices ”, insert “ (if any) ”. 
88  Paragraph 4.7(2)(c) 
Repeal the paragraph. 
89  Regulation 4.15, note 2 
After “ sub-offices ”, insert “ (if any) ”. 
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OPC50135 - 18/02/2013 5:04:48 PM 90  Paragraph 17A.28(2)(b) 
Omit “paragraph  41 (6) (a)”, substitute “paragraph  41(3)(b)”.  
91  Regulation 17A.42F (heading) 
Repeal the heading, substitute: 
17A.42F  Appeals to Federal Court or Federal Magistrates Court 
92  Regulation 17A.42F 
After “ Federal Court ”, insert “ or Federal Magistrates Court ”. 
93  Regulation 19.1 
After “sub-office ” (wherever occurring) , insert “ (if any) ”. 
94  Subregulation 21.5(2) 
After “sub-office ” (wherever occurring) , insert “ (if any) ”. 
95  Regulations 21.15 and 21.16 
Repeal the regulations, substitute: 
21.15   Opportunity to be heard by Registrar 
 (1) This regulation applies if the Act or these Regulations provide for a 
person to be heard by the Registrar. 
 (2) The Registrar may give the person an opportunity to be heard by: 
 (a) asking the person for written submissions; or 
 (b) notifying the person that on request to the Registrar, the 
person may be heard by way of an oral hearing on a date, and 
at a time and place, determined by the Registrar; or 
 (c) notifying the person of the date, time and place of an oral 
hearing. 
 (3) A request for a hearing must be in an approved form. 
 (4) The Registrar is not bound by the rules of evidence, but may be 
informed on any matter that is before the Registrar in a way that 
the Registrar reasonably believes to be appropriate. 
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OPC50135 - 18/02/2013 5:04:48 PM  (5) The Registrar may decide a matter if each person that is a party to 
the matter: 
 (a) notifies the Registrar that the person does not want to be 
heard; or 
 (b) does not file written submissions if requested under 
subregulation 21.16(1); or 
 (c) does not request an oral hearing after being notified under 
paragraph (2)(b); or 
 (d) does not attend an oral hearing if notified under 
subregulation 21.16(2). 
 (6) In the circumstances mentioned in subregulation (5), the Registrar 
may make a decision by reference to relevant information that is 
held in the Trade Marks Office. 
 (7) If the Registrar makes a decision in any of the circumstances 
mentioned in subregulation (5), the Registrar must notify each 
party of the Regi strar’s decision.  
21.16   Written submissions and oral hearings 
Written submissions 
 (1) If the Registrar decides that a person may be heard by way of 
written submissions, the Registrar must: 
 (a) notify the person of the period in which the submissions must 
be filed (being at least 10 business days); and 
 (b) determine the matter after considering the written 
submissions; and 
 (c) notify the person of the Registrar’s decision in relation to the 
matter. 
Oral hearings 
 (2) If the Registrar decides that a person may be heard by way of an 
oral hearing, the Registrar must give notice of the date, time and 
place of the hearing, to the person, at least 10 business days before 
the day the hearing is to begin. 
 (3) The Registrar may adjourn an oral hearing from time to time or 
from place to place by notifying the person. 
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OPC50135 - 18/02/2013 5:04:48 PM  (4) The Registrar may hold an oral hearing in which: 
 (a) a person appears in person; or 
 (b) a person participates by telephone or other means of 
telecommunications that the Registrar reasonably allows. 
 (5) In addition to the Registrar’s other powers, the Registrar may 
direct a person to provide a written summary of submissions. 
 (6) An oral hearing must be conducted with as little formality and 
technicality, and as quickly, as the requirements of the Act, these 
Regulations and a proper consideration of the matters before the 
Registrar, allow. 
 (7) Subject to these Regulations, the Registrar may give a direction 
that is reasonably necessary for the conduct of the hearing. 
 (8) The Registrar must notify a person who appears at the hearing of 
the Registrar’s decision in relation to the matter.  
96  Paragraph 21.24A(b) 
After “ sub-office ”, insert “ (if any) ”. 
97  Subregulation 21.29(1) 
Repeal the subregulation, substitute: 
 (1) For the definition of Convention country  in subsection 6(1) of the 
Act, the following countries are prescribed: 
 (a) a foreign country that is a signatory to the Paris Convention 
for the Protection of Industrial Property of 20 March 1883, as 
in force from time to time; 
 (b) a foreign country that is a full member of the World Trade 
Organization. 
Note 1: For signatories to the Paris Convention for the Protection of Industrial 
Property, see www.wipo.int. 
Note 2: For full members of the World Trade Organization, see www.wto.org. 
98  Schedule 9 (table items 1 and 3) 
Repeal the items, substitute: 
1 Filing an application to register a trade mark under 
subsection  27(5) or 45(1) of the Act in respect of  
 
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OPC50135 - 18/02/2013 5:04:48 PM goods or services in one or more of the prescribed 
classes:  
(a) by approved means  
(b) in addition to the fee for paragraph  (a), if the 
goods and services are specified in the 
application otherwise than by using the official 
Goods and Services pick list  
(c) by another means  
(d) by AFS request mentioned in regulation  4.2A   
$120 for each cl ass 
$80 for each class  
 
 
 
$220 for each class  
$120 for each class  
3 Filing an application to register 2 or more trade 
marks as a series under section  51 of the Act:  
(a) by approved means  
(b) in addition to the fee for paragraph  (a), if the 
goods and services are specified in the 
application otherwise than by using the official 
Goods and Services pick list  
(c) by another means   
 
$270 for each class  
$80 for each class  
 
 
$370 for each class  
99  Schedule 10 
Repeal the Schedule. 
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OPC50135 - 18/02/2013 5:04:48 PM Schedule 7— Amendments relating to 
transitional provisions 
   
Patents Regulations 1991 
1  Before regulation 23 .1 
Insert: 
Part 1 —General 
   
2  At the end of Chapter 23 
Add: 
Part 2 —Amendments made by particular 
instruments 
   
23.36   Amendments made by Intellectual Property Legislation 
Amendment (Raising the Bar) Regulation 2013 (No. 1)  
 (
1) The amendments of these Regulations made by the items of 
Schedule 1 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  apply as set out in the 
following table. 
Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
1 item 1 the matters referred to in subitem  55(1) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
2 item 2 the matters referred to in subitem  55(9) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
3 item 3 the matters referred to in subitem  55(1) of 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
4 item 5 the matters referred to in subitem  55(4) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
5 items  6, 7 and 8, in their 
application to the 
re-examination of a 
standard patent  the matters referred to in subitem  55(5) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
6 items  6, 7 and 8, in their 
application to the 
re-examination of an 
innovation patent  the matters referred to in subitem  55(7) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
7 item 9 the matters referred to in subitem  55(9) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
8 item 10, new 
subregulation  10.3(1)  a provisional specification filed on or after 
15 April 2013  
9 item 10, new 
subregulation 10.3(2)  the matters referred to in subitem  55(9) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012 , but 
treating the first  reference to a complete 
specification in that subitem as a reference to an 
abstract  
10 item 11 the matters referred to in subitem  55(9) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
11 item 12 the matters referred to in subitem  55(4) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
12 item 13 the matters referred to in subitem  55(8) of 
Schedule  1 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
13 items  15, 16, 17, 18  and 
20 the matters referred to in subitem  55(3) of 
Schedule  1 to the Intellectual Property Laws 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
Amendment (Raising the Bar) Act 2012  
 (2) The amendments of these Regulations made by the items of Part 1 
of Schedule 3 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  apply as set out in the 
following table. 
Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
1 item 2 (new 
regulation  5.3) an opposition proceeding commenced before 
15 April 2013  
2 item 2 (new 
subregulations 5.9(1) to  
(5)) and item  9 (new 
item 218 of Schedule  7) an opposition proceeding commenced before 
15 April 2013 in which an extension of time is 
requested for a period that commences on or 
after 15  April 2013  
However:  
(a) a reference in subregulation 5.9(1) to 
regulation  5.8 is taken to be a reference to 
regulation  5.8 as in force immediately before 
15 April 2013; and  
(b) paragraph  5.10(1)(b) and subregulation 
5.10(2), as in force immediately before 
15 April 2013, are taken not to apply  
3 item 2 (new 
regulation  5.20)  an opposition proceeding commenced before 
15 April 2013 in which the Commissioner has 
not set a hearing date, or issued a notice of 
hearing to the parties, before 15  April 2013  
However:  
(a) a reference in that regulation to 
regulation  5.26 is taken to be a reference to 
regulation  5.15 as in force immediately 
before 15  April 2013; and  
(b) a reference in that regulation to Part  5.4 is 
taken to be a ref erence to regulation  5.5 as in 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
force immediately before 15  April 2013; and  
(c) a reference in that regulation to 
regulation  5.19 is taken to be a reference to 
regulation  5.6 as in force immediately before 
15 April 2013; and  
(d) regulation  5.12, as in force  immediately 
before 15  April 2013, is taken not to apply  
4 items  2, 7 and 9  an opposition proceeding commenced by the 
filing of a notice of opposition on or after 
15 April 2013  
However, if:  
(a) an amendment was advertised under 
regulation  10.5 before 15  April 2013; and  
(b) a notice of opposition is filed for 
subsection  104(4) of the Act on or after 
15 April 2013;  
the reference in subregulation 5.10(1) to 2 
months is taken to be a reference to 3 months  
Also, if:  
(a) an opposition proceeding was commenced 
by the filing of a notice of opposition before 
15 April 2013; and  
(b) a document or evidence was not served in 
relation to the opposition proceeding before 
15 April 2013; and  
(c) the document or evidence is required to be 
served on or after 15  April 2013;  
then:  
(d) a requirement in Chapter  5, or 
regulation  22.21, as in force immediately 
before 15  April 2013, for a party to serve a 
document or evidence on a person is taken to 
be a requirement to file the document or 
evidence; and  
(e) a reference to a documen t or evidence 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
having been served is taken to be a reference 
to the document or evidence having been 
filed; and  
(f) the Commissioner must give a copy of the 
document or evidence to the person; and  
(g) if: 
(i) under Chapter  5, as in force 
immediately before 15 April 2013, a 
period for the person to do an action 
was calculated from the date that a 
party served the document or 
evidence; and  
(ii) the Commissioner does not give the 
document or evidence to the person 
on the filing date;  
 the Commissioner must exte nd the period 
for the person to do the action by a number 
of days equal to the number of days between 
when the document or evidence was filed 
and when the Commissioner gave the 
document or evidence to the person  
5 item 3 (new 
regulation  6A.1)  the matters referred to in subitem  32(3) of 
Schedule  3 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
6 item 3 (new 
regulation  6A.2)  the matters referred to in subitem  32(4) of 
Schedule  3 to the Intellectual Property Laws 
Amendment  (Raising the Bar) Act 2012  
 (3) The amendment of these Regulations made by item 14 of 
Schedule 4 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  applies in relation to a 
charge that: 
 (a) is laid against a registered patent attorney on or after 15 April 
2013; and 
 (b) alleges the commission of a serious offence. 
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OPC50135 - 18/02/2013 5:04:48 PM  (4) The amendments of these Regulations made by the items of Part 2 
of Schedule 6 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  apply as set out in the 
following table. 
Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
1 item 5 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
2 item 6 the matters referred to in 
subitem  133(1) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
3 item 7 the matters referred to in 
subitem  133(4) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
4 item 8 a complete application for a standard 
patent in which a request for 
examination is made on or after 
15 April 2013  
5 items  9 to 12  the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
6 item 13 a PCT application that enters the 
national phase on or after 15  April 
2013  
7 items  14 to 18  the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
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Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
8 item 20 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
9 item 21 the matters referred to i n 
subitem  55(9) of Schedule  1 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
10 item 22 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
11 item 23 the matters referred to in 
subitem  55(9) of Schedule  1 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
12 item 24, regulation  3.14C  the matters referred to in 
subitem  133(8) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
13 item 25 and 26  the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
14 item 27 a direction issued under 
subsection  44(2) of the Act, on or 
after 15  April 2013  
15 item 28 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
Amendment (Raising the Bar) Act 
2012  
16 item 30 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amen dment (Raising the Bar) Act 
2012  
17 item 31 a PCT application that enters the 
national phase on or after 15  April 
2013  
18 items  36 and 37  the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
19 item 38 a document that:  
(a) is related to a patent application; 
and 
(b) is not a specification;  
filed before, on or after 15  April 
2013  
20 item 39 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws  
Amendment (Raising the Bar) Act 
2012  
21 items  40 and 41  the matters referred to in 
subitem  133(9) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
22 item 42 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
23 item 43 a PCT application filed with a 
receiving Office on or after 15  April 
2013  
24 item 44 the matters referred to in 
subitem  133(9) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
25 item 45 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
26 item 47, paragraph  9A.4(f)  an application in relation to which a 
reques t for examination is made on 
or after 15  April 2013  
27 item 47, paragraph  9A.4(g)  the matters referred to in 
subitem  133(12) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
28 items  48 to 50  the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
29 item 51 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar)  Act 
2012  
30 item 53 an application or patent in relation to 
which leave to amend the patent 
request, complete specification or 
other filed document is granted on or 
after 15  April 2013  
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
31 item 54 the matters referred to in 
subitem  133(3) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  unless other arrangements are 
made in this regulation  
32 item 54 a request to rectify the Register to 
which the following apply:  
(a) the request was published before 
15 April 2013;  
(b) the period to file an opposition 
under subregulation 5.3(5A) had 
not expired before 15  April 
2013;  
(c) no notice of opposition was filed 
before 15  April 2013;  
as if it were a request to rectify the 
Register made on 15  April under 
regulation  10.7 
33 item 55 all of the following:  
(a) aircraft, land vehicles and vessels 
that were foreign aircraft, foreign 
land vehicles or foreign vessels, 
within the meaning of the Act, 
immediately before 15  April  
2013;  
(b) aircraft and vessels that are 
registered on or after 15  April 
2013 ; 
(c) land vehicles the ownership of 
which is acquired on or after 
15 April 2013  
34 item 56 the matters referred to in 
subitem  133(9) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
35 item 57 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
36 item 58 the matters referred to in 
subitem  133(15) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
37 item 61 the matters referred to in 
subitem  133(6) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
38 item 62, new paragraph  13.4(1)(g)  an application in relation to which a 
request for examination is made on 
or after 15  April 2013  
39 item 62, new paragraph  13.4(1)(ga)  the matters referred to in 
subitem  133(11) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
40 item 64, reference to new 
paragraph  13.4(1)(g)  an application in relation to which a 
request for examination is made on 
or after 15  April 2013  
41 item 64, reference to new 
paragraph  13.4(1)(ga)  the matters referred to in 
subitem  133(11) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising t he Bar) Act 
2012  
42 items  65 and 66  the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
43 items  67 and 68  an application in relation to which a 
request for examination is made on  
or after 15  April 2013  
44 item 77, other than the insertion of 
new subregulation 22.22(1)  a hearing for which the 
Commissioner has issued a hearing 
notice, or an invitation to be heard, 
on or after 15  April 2013  
45 item 78 an act referred to in 
subsection  226(1) of the Act done in 
relation to a prescribed document on 
or after 15  April 2013  
46 item 80 a PCT application that enters the 
national phase on or after 15  April 
2013  
47 item 81 the matters referred to in 
subitem  133(2) of Schedule  6 to t he 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
48 item 82 the matters referred to in 
subitem  133(3) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
49 item 83 the matters referred to in 
subitem  133(2) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
50 items  84 and 85  the matters referred to in 
subitem  133(9) of Schedule  6 to the 
Intellectual Property Laws 
Amendment (Raising the Bar) Act 
2012  
51 item 86 an application in relation to which a 
request for examination is made on 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made by : Column 2  
apply in relation to : 
or after 15  April 2013  
 (5) The amendments of these Regulations made by the items of Part 2 
of Schedule 6 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  do not apply as set out 
in the following table. 
Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
do not apply : 
1 item 29 in relation to the matters referred to in 
subitem  134(1) of Schedule  6 to the Intellectual 
Property Laws Amendment (Raising the Bar) 
Act 2012   
2 items  32 to 3 5 in relation to the matters referred to in 
subitem  134(1) of Schedule  6 to the Intellectual 
Property Laws Amendment (Raising the Bar) 
Act 2012  
3 item 52 in relation to the matters referred to in item  134 
of Schedule  6 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
4 item 54 to the extent that they would prevent the 
correction of a patent granted before 15  April 
2013 in accordance with regulation  10.7 as in 
force immediately before 15  April 2013  
5 item 60 in relation to the matters referred to in item  134 
of Schedule  6 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
 (6) Regulation 8.3, as continued in force in accordance with this 
regulation, is amended by omitting subregulation 8.3(2) and 
inserting: 
 (2) At the end of section 141: 
Add: 
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194 Intellectual Property Legislation Amendment (Raising the Bar) 
Regulation  2013 (No. 1)  No. 31 , 2013  
 
OPC50135 - 18/02/2013 5:04:48 PM  (3) Despite subsection (2), a PCT application is also to be treated as 
having been withdrawn if Article 11(3) of the PCT ceases to have 
effect in Australia in relation to the application under Article 
24(1)(i) of the PCT. 
Note: This amendment applies in relation to a PCT application that was 
made before 15 April 2013 and for which a notice of withdrawal was 
filed on or after 15 April 2013. 
Trade Marks Regulations 1995 
3  Before regulation 22 .1 
Insert: 
Division 1 —General 
4  At the end of Part 22 
Add: 
Division 2 —Amendments made by particular instruments 
22.9  Amendments made by the Intellectual Property Legislation 
Am
endment (Raising the Bar) Regulation 2013 (No. 1)  
 (
1) The amendments of these Regulations made by the items of Part 2 
of Schedule 3 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  apply as set out in the 
following table. 
Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
1 all items of Part  2 the matters referred to in subitem  32(7) of 
Schedule  3 to the Intellectual Property Laws 
Amendment (Raising the Bar) Act 2012  
2 items  10 to 30  an opposition proceeding commenced by the 
filing of a notice of intention to oppose on or 
after 15  April 2013  
However, if:  
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
(a) an application was advertised before 
15 April 2013; and  
(b) a notice of intention to oppose is filed on or 
after 15  April 2013;  
the reference in subregulations 5.6(1), 9.8(1), 
17A.33(1) and 17A.48G(1) to 2 months is taken 
to be a reference to 3 months  
Also, if:  
(a) an opposition proceeding was commenced 
before 15  April 2013; a nd 
(b) a document or evidence was not served in 
relation to the opposition proceeding before 
15 April 2013; and  
(c) the document or evidence is required to be 
served on or after 15  April 2013;  
then:  
(d) a requirement in Part  5, 6 or 9, Subdivision  3 
of Division  3 of Part  17A, Subdivision  3 or 
Subdivision  4 of Division  5 of Part  17A, as 
in force immediately before 15  April 2013, 
for a party to serve a document or evidence 
on a person is taken to be a requirement to 
file the document or evidence; and  
(e) a reference to a document or evidence 
having been served is taken to be a reference 
to the document or evidence having been 
filed; and  
(f) the Registrar must give a copy of the 
document or evidence to the person; and  
(g) if: 
(i) under Part  5, 6 or 9, Subdiv ision  3 of 
Division  3 of Part  17A, Subdivision  3 
or Subdivision  4 of Division  5 of 
Part 17A, as in force immediately 
before 15  April 2013, a period for the 
person to do an action was calculated 
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Regulation  2013 (No. 1)  No. 31 , 2013  
 
OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
from the date that a party served the 
document or evidence; an d 
(ii) the Registrar does not give the 
document or evidence to the person 
on the filing date;  
 the Registrar must extend the period for the 
person to do the action by a number of days 
equal to the number of days between when 
the document or evidence was fi led and 
when the Registrar gave the document or 
evidence to the person  
3 item 11 (new 
regulation  5.3), item  14 
(new regulation  9.3), 
item 16 (new 
regulation  17A.30) and 
item 17 (new 
regulation  17A.48A)  an opposition proceeding commenced before 
15 April 2013  
4 item 11 (new 
regulation  5.17), item  13 
(new regulation  6.9), 
item 14 (new 
regulation  9.20), item  16 
(new 
regulation  17A.34M), 
item 17 (new 
regulation  17A.48V) and 
item 18 (new 
regulation  21.20E)  an opposition proceeding commenced before 
15 April 2013 in which the Registrar has not set 
a hearing date, or issued a notice of hearing to 
the parties, before 15  April 2013  
However:  
(a) a reference in regulation  5.17 to 
paragraph  5.8(3)(b) or subregulation 5.8(4) 
is taken not to apply; and  
(b) a reference in regulation  5.17 to 
regulation  5.14 is taken to be a reference to 
regulations  5.7 to 5.13 as in force 
immediately before 15  April 2013; and  
(c) a reference in paragraph  6.9(1)(a) to a party 
requesting a hearing is taken to include the 
conditions set out in subregulations 5.14(1) 
and (2) as in force immediately before 
15 April 2013; and  
(d) a reference in regulation  9.20 to 
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OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
regulation  9.10 is taken not to apply; and  
(e) a reference in regulation  9.20 to 
regulation  9.16 is taken to be a reference to 
regulation  9.4 as in force immediately before 
15 April 2013; and  
(f) a reference in regulation  17A.34 M to 
regulation  17A.34B or 17A.34H is taken not 
to apply; and  
(g) a reference  in regulation  17A.34 M to 
regulation  17A.34 J is taken to be a reference 
to regulation  17A.33 as in force immediately 
before 15  April 2013; and  
(h) a reference in regulation  17A.34 M to 
regulation  17A.34 N is taken to be a 
reference to regulation  17A.34 as in  force 
immediately before 15  April 2013; and  
(i) a reference in regulation  17A.48 V to 
regulation  17A.48 K is taken not to apply; 
and 
(j) a reference in regulation  17A.48 V to 
regulation  17A.48 R is taken to be a 
reference to subregulation 17A.48(5) as in 
force immediately before 15  April 2013; and  
(k) a reference in paragraph  21.20E(1)(a) to a 
party requesting a hearing is to include the 
conditions set out in subregulations 5.14(1) 
and (2) as in force immediately before 
15 April 2013; and  
(l) regulation  5.14, as in force immediately 
before 15  April 2013, is taken not to apply  
5 item 11 (new 
regulation  5.15), item  14 
(new regulation  9.18) , 
item 16 (new 
regulation  17A.34 K), 
item 17 (new 
regulation  17A.48 T) and an opposition proceeding commenced before 
15 April 2013 in which an extension of time is 
requested for a period that commences on or 
after 15  April 2013  
However:  
(a) a reference in subregulation 5.15(1) to 
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198 Intellectual Property Legislation Amendment (Raising the Bar) 
Regulation  2013 (No. 1)  No. 31 , 2013  
 
OPC50135 - 18/02/2013 5:04:48 PM Transitional provisions  
Item  Column 1  
The amendments made 
by: Column 2  
apply in relation to : 
item 24 (Schedule  9, new 
item 6) regulation  5.14 is taken to be a reference to 
regulations  5.7 to  5.13 as in force 
immediately before 15  April 2013; and  
(b) a reference in subregulation 9.18(1) to 
regulation  9.16 is taken to be a reference to 
regulation  9.4 as in force immediately before 
15 April 2013; and  
(c) a reference in subregulation 17A.34K(1) t o 
regulation  17A.34J is taken to be a reference 
to regulation  17A.33 as in force immediately 
before 15  April 2013; and  
(d) a reference in subregulation 17A.48T(1) to 
regulation  17A.48R is taken to be a 
reference to subregulation 17A.48(5) as in 
force immed iately before 15  April 2013; and  
(e) paragraph  5.15(1)(a) and 
subparagraph  5.15(3)(c)(i), as in force 
immediately before 15  April 2013, are taken 
not to apply  
 (2) The amendment of these Regulations made by item 41 of 
Schedule 4 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  applies in relation to a 
charge that: 
 (a) is laid against a registered trade mark attorney on or after 
15 April 2013; and 
 (b) alleges the commission of a serious offence. 
 (3) The amendments of these Regulations made by item 95 of 
Schedule 6 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1)  apply in relation to a 
hearing for which the Registrar issues a hearing notice, or an 
invitation to be heard, on or after 15 April 2013. 
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OPC50135 - 18/02/2013 5:04:48 PM Designs Regulations 2004 
5  Before regulation 12.01 
Insert: 
Part 1 —General 
   
6  At the end of Chapter 12 
Add: 
Part 2 —Amendments made by particular 
instruments 
   
12.05   Amendments made by the Intellectual Property Legislation 
A
mendment (Raising the Bar) Regulation 2013 (No. 1)  
  
The amendments of these Regulations made by item 3 of 
Schedule 6 to the Intellectual Property Legislation Amendment 
(Raising the Bar) Regulation 2013 (No. 1) , other than the insertion 
of new subregulation 11.22(1), apply in relation to a hearing for 
which the Registrar issues a hearing notice, or an invitation to be 
heard, on or after 15 April 2013. 
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