IP/N/1/AUS/P/8  
 
18 June 2013  
(13-3164)  Page: 1/11  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
 MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
AUSTRALIA  
This document reproduces the text1 of the Patents Amendment Regulations 2008 (No. 1), as 
notified by Australia on 22 May 2013 under Article 63.2 of the Agreement (see document IP/N/1/AUS/5). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
AUSTRALIE  
Le présent document contient le texte1 du Règlement de 2008 portant modification du Règlement 
sur les brevets (n° 1), notifié par l'Australie le 22 mai 2013 au titre de l'article 63:2 de l'Accord 
(voir le document IP/N/1/AUS/5).  
Consejo de los Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
A
USTRALIA  
En el presente documento se reproduce el texto1 del Reglamento de 2008 que modifica el 
Reglamento sobre las patentes (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/P/8 
 
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  PP 3-11 - Offset (Pdf file attached) 
PP 3 à 11 - Offset (fichier Pdf joint) PP 3-11 - Offset (fichero Pdf adjunto)   
 
0806322Y-080820EV.doc 
 
Patents Amendment Regulations 
2008 (No. 1)1 
Select Legislative In strument 2008 No. 178 
I, PHILIP MICHAEL JEFFERY, Governor-General of the 
Commonwealth of Australia, acting with the advice of the Federal Executive Council, make  the following Regulations 
under the Patents Act 1990 . 
Dated 29 August 2008 
P. M. JEFFERY 
Governor-General 
By His Excellency’s Command 
KIM CARR  
Minister for Innovation, Industr y, Science and Research  
Federal Register of Legislative Instruments F2008L03228
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Regulation 1 
 
 
2 Patents Amendment Regul ations 2008 (No. 1) 2008, 178 
 
 1 Name of Regulations 
  These Regulations are the Patents Amendment Regulations 
2008 (No. 1) . 
2 Commencement   These Regulations are taken to have commenced on 1 July 
2008. 
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
4 Transitional provision for international applications 
received or filed before commencement 
 (1) Despite the amendment of Schedule 2A to the Patents 
Regulations 1991  by Schedule 1 to these Regulations, 
Schedule 2A to the Patents Regulations 1991 , as in force 
immediately before 1 July 2008, co ntinues to apply in relation 
to an international application whose international filing date is 
earlier than 1 July 2008. 
 (2) Despite the amendment of: 
 (a) the Schedule of Fees in Schedule 2A to the Patent 
Regulations 1991  by Schedule 1 to these Regulations; 
and 
 (b) Part 4 of Schedule 7 to the Patents Regulations 1991  by 
Schedule 1 to these Regulations; 
the Schedule of Fees in Schedule 2A, and Part 4 of Schedule 7, 
to the Patents Regulations 1991 , as in force immediately before 
1 July 2008, continue to apply in  relation to an international 
application: 
 (c) whose international filing da te is earlier than 1 July 2008; 
or 
 (d) that was received by the Patent Office before 1 July 
2008. 
Federal Register of Legislative Instruments F2008L03228
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         - 4 -Amendments taken to have commenced on 1 July 2008 Schedule 1 
  
 
 
 
2008, 178 Patents Amendment Regul ations 2008 (No. 1) 3 
 
 Schedule 1 Amendments taken to have 
commenced on 1 July 2008 
(regulation 3) 
   
[1] Schedule 2A, before Table of Provisions 
omit 
and on 1 April 2007. 
insert 
on 1 April 2007, and on 1 July 2008. 
[2] Schedule 2A, Table of Provisions, Rule 4.11 
substitute 
 4.11 Reference to Continuation or Continuation-in-Part, or 
Parent Application or Grant 
 4.12 Taking into Account Results of Earlier Search 
[3] Schedule 2A, Table of Provisions, before Rule 13 
insert 
Rule 12 bis Copy of Results of Earlie r Search and of Earlier 
Application; Translation 
 12 bis.1 Copy of Results of Ear lier Search and of Earlier 
Application; Translation 
[4] Schedule 2A, Table of Provisions, Rules 41 and 41.1 
substitute 
Rule 41 Taking into Account Results of Earlier Search 
 41.1 Taking into Account Results of Earlier Search 
Federal Register of Legislative Instruments F2008L03228
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         - 5 -Schedule 1 Amendments taken to have commenced on 1 July 2008 
  
 
 
 
4 Patents Amendment Regul ations 2008 (No. 1) 2008, 178 
 
 [5] Schedule 2A, Rule 4.1 (b) (ii) 
substitute 
 (ii) indications relating to an earlier search as provided in Rules 4.12 (i) and 
12bis.1 (c) and  (f), 
[6] Schedule 2A, Rule 4.1  (c) (v) 
substitute 
 (v) a request for restoration of the right of priority, 
 (vi) a statement as provided in Rule 4.12 (ii). 
[7] Schedule 2A, Rule 4.11 
substitute 
4.11   Reference to Continuation or Continuati on-in-Part, or Parent Application or Grant 
 (a) If: 
 (i) the applicant intends to make an indication under Rule 49bis.1 (a) or (b) of 
the wish that the international app lication be treated, in any designated 
State, as an application fo r a patent of addition, ce rtificate of addition, 
inventor’s certificate of addition or utility certificate of addition; or 
 (ii) the applicant intends to make an indication under Rule 49bis.1 (d) of the 
wish that the internationa l application be treated, in any designated State, 
as an application for a continuation or  a continuation-in-part of an earlier 
application; 
the request shall so indicate and shall indicate the relevant parent application or parent 
patent or other parent grant. 
 (b) The inclusion in the request of an indication under paragraph (a) shall have no 
effect on the operation of Rule 4.9. 
4.12   Taking into Account Results of Earlier Search  
  If the applicant wishes the International Searching Authority to take into 
account, in carrying out the international sear ch, the results of an earlier international, 
international-type or national search carried out by the same or another International 
Searching Authority or by a nati onal Office (“earlier search”): 
 (i) the request shall so indicate and shall specify the Authority or Office 
concerned and the application in respec t of which the earlier search was 
carried out; 
 (ii) the request may, where applicable, contain a statement to the effect that 
the international application is the sa me, or substantially the same, as the 
application in respect of which the ear lier search was carried out, or that 
the international application is the same , or substantially the same, as that 
earlier application except that it is filed in a different language. 
Federal Register of Legislative Instruments F2008L03228
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         - 6 -Amendments taken to have commenced on 1 July 2008 Schedule 1 
  
 
 
 
2008, 178 Patents Amendment Regul ations 2008 (No. 1) 5 
 
 [8] Schedule 2A, before Rule 13 
insert 
Rule 12bis  
Copy of Results of Earlier Search 
and of Earlier Application; Translation  
12bis.1   Copy of Results of Earlier Search and of Earlier Application; Translation 
 (a) Where the applicant has, under Rule  4.12, requested the International 
Searching Authority to take into account the results of an earlier search carried out by 
the same or another Internat ional Searching Authority or  by a national Office, the 
applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together 
with the international application, a copy of the results of the earlier  search, in whatever 
form (for example, in the form of a search report, a listing of cited prior art or an 
examination report) they are presented by the Authority or Office concerned. 
 (b) The International Searching Authority may, subject to paragraphs (c) to (f) , 
invite the applicant to furnish to it, within a time limit which shall be reasonable under the 
circumstances: 
 (i) a copy of the earlier application concerned; 
 (ii) where the earlier application is in a language which is not accepted by the 
International Searching Authority, a translation of the earlier application 
into a language which is accepted by that Authority; 
 (iii) where the results of the earlier search are in a language which is not 
accepted by the International Searchi ng Authority, a translation of those 
results into a language which is  accepted by that Authority; 
 (iv) a copy of any document cited in the results of the earlier search. 
 (c) Where the earlier search was carried out by the same Office as that which is 
acting as the receiving Office , the applicant may,  instead of subm itting the copies 
referred to in paragraphs (a) and (b)  (i) and (iv), indicate the wish that the receiving 
Office prepare and transmit them to the Internat ional Searching Author ity. Such request 
shall be made in the request and may be s ubjected by the receiving Office to the 
payment to it, for its own benefit, of a fee. 
 (d) Where the earlier search was carried out by the same International Searching 
Authority, or by the same Office as that which is acting as the International Searching 
Authority, no copy or translation referred to in paragraphs (a) and (b)  shall be required to 
be submitted under those paragraphs.  (e) Where the request contains a statement under Rule 4.12 (ii) to the effect that 
the international application is the same, or substantially the same, as the application in 
respect of which the earlier search was carried out, or that the international application is 
the same, or substantially the sa me, as that earlier application except that it is filed in a 
different language, no copy or translation referred to in paragraphs (b) (i) and (ii) shall be 
required to be submitted under those paragraphs. 
 (f) Where a copy or translation referred to in paragraphs (a) and (b) is available to 
the International Searching Authority in a form  and manner acceptable to it, for example, 
from a digital library or in the form of the priority document, and the applicant so indicates 
in the request, no copy or translation shall be required to be submitted under those 
pa
ragraphs. 
Federal Register of Legislative Instruments F2008L03228
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         - 7 -Schedule 1 Amendments taken to have commenced on 1 July 2008 
  
 
 
 
6 Patents Amendment Regul ations 2008 (No. 1) 2008, 178 
 
 [9] Schedule 2A, Rule 16.3 
substitute 
16.3   Partial Refund 
  Where the International Searching Authority takes into account, under 
Rule 41.1, the results of an earlier search in carrying out the international search, that 
Authority shall refund the search fee paid in c onnection with the international application 
to the extent and under the conditions  provided for in the agreement under 
Article 16 (3) (b). 
[10] Schedule 2A, Rule 26 bis.3 (d) 
substitute 
 (d) The submission of a request under paragraph (a) may be subjected by the 
receiving Office to the payment to it, fo r its own benefit, of a fee for requesting 
restoration, payable within the time  limit applicable under paragraph (e). The amount of 
that fee, if any, sha ll be fixed by the receiving Office. The time limit for payment of the fee 
may be extended, at the option of the receiving Office, for a period of up to two months from the expiration of the time  limit applicable under paragraph (e). 
[11] Schedule 2A, Rule 29.1 (iv) 
substitute 
 (iv) the International Bureau shall not be required to notify the applicant of the 
receipt of the record copy; 
 (v) no international publication of the in ternational application shall be effected 
if the notificat ion of the said decl aration transmitted by the receiving Office 
reaches the International Bureau before the technical preparations for international publication have been completed. 
[12] Schedule 2A, Rule 41 
substitute 
Rule 41 
Taking into Account Results of Earlier Search 
41.1   Taking into Account Results of Earlier Search 
  Where the applicant has, under Rule  4.12, requested the International 
Searching Authority to take into account the results of an earlier search and has 
complied with Rule 12bis.1 and: 
 (i) the earlier search was carried out by the same International Searching 
Authority, or by the same Office as that  which is acting as the International 
Searching Authority, the International Searching Authority shall, to the extent possible, take those result s into account in carrying out the 
international search; 
Federal Register of Legislative Instruments F2008L03228
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2008, 178 Patents Amendment Regul ations 2008 (No. 1) 7 
 
  (ii) the earlier search was carried out  by another International Searching 
Authority, or by an Office other than that which is acting as the 
International Searching Authority, the International Searching Authority 
may take those results into account in carrying out the international 
search. 
[13] Schedule 2A, Schedule of Fees 
substitute 
SCHEDULE OF FEES 
Fees  Amounts  
1.  International filing fee: 
  (Rule 15.2)  1,330 Swiss francs plus 
15 Swiss francs for each sheet 
of the international application 
in excess of 30 sheets 
2.   Handling fee: 
  (Rule 57.2)  200 Swiss francs 
Reductions  
3.   The international filing fee is reduced by the following amount if the international 
application is, as provided for in the Administrative Instructions, filed: 
(a) on paper together with a copy in electronic 
form, in character coded format, of the 
request and the abstract: 100 Swiss francs 
(b) in electronic form, the request not being in 
character coded format: 100 Swiss francs 
(c) in electronic form, the request being in 
character coded format: 200 Swiss francs 
(d) in electronic form, the request, description, 
claims and abstract being in character coded 
format: 300 Swiss francs 
4.   The international filing fee (where applicable, as reduced under item 3) and the 
handling fee are reduced by 90% if the international application is filed by: 
(a) an applicant who is a natural person an d who is a national of and resides in a 
State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for 
determining its scale of assessments for the contributions payable for the 
years 1995, 1996 and 1997) or, until December 31, 2009, one of the following States: Antigua and Barbuda, Bahrain, Barbados, Libyan Arab Jamahiriya, 
Oman, Seychelles, Singapore, Trinidad & Tobago and United Arab Emirates; 
or 
(b) an applicant, whether a natural person or  not, who is a national of and resides 
in a State that is classed as a least developed country by the United Nations; 
Federal Register of Legislative Instruments F2008L03228
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         - 9 -Schedule 1 Amendments taken to have commenced on 1 July 2008 
  
 
 
 
8 Patents Amendment Regul ations 2008 (No. 1) 2008, 178 
 
 Fees  Amounts  
provided that, if there are several applicants, each must satisfy the criteria set out in 
either sub-item (a) or (b). 
[14] Schedule 7, Part 4 
substitute 
Part 4 Fees payable for the benefit of the 
International Bureau 
 
Item Matter Fee 
401 International filing fee: 
(Rule 15.2 of the PCT) 1,330 Swiss francs 
plus 15 Swiss francs for each sheet of the international application in excess of 30 sheets 
402 Handling fee: 
(Rule 57.2 of the PCT) 200 Swiss francs 
Reductions 
403 The international filing fee is reduced by the following amount if the 
international application is, as provided for in the Administrative Instructions, filed: 
  (a) on paper together with a copy in 
electronic form, in character coded format, of the request and the abstract: 100 Swiss francs 
  (b) in electronic form, the request not being in 
character coded format: 100 Swiss francs 
  (c) in electronic form, the request being in 
character coded format: 200 Swiss francs 
  (d) in electronic form, the request, 
description, claims and abstract being in character coded format: 300 Swiss francs 
Federal Register of Legislative Instruments F2008L03228
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2008, 178 Patents Amendment Regul ations 2008 (No. 1) 9 
 
 Item Matter Fee 
404 The international filing fee (where applicable, as reduced under 
item 403) and the handling fee are reduced by 90% if the international 
application is filed by: 
  (a) an applicant who is a natura l person and who is a national of and 
resides in a State whose per capita national income is below US$3,000 (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997) or, until December 31, 2009, one of the following States: Antigua and Barbuda, Bahrain, Barbados, 
Libyan Arab Jamahiriya, Oman, Seychelles, Singapore, Trinidad & Tobago and United Arab Emirates; or 
  (b) an applicant, whether a natural person or not, who is a national 
of and resides in a State that is classed as a least developed country by the United Nations; 
 provided that, if there are several applicants, each must satisfy the criteria set out in either sub-item (a) or (b). 
 
Note 
1. All legislative instruments and comp ilations are registered on the Federal 
Register of Legislative Instruments kept under the Legislative 
Instruments Act 2003 . See http://www.frli.gov.au . 
 
Federal Register of Legislative Instruments F2008L03228
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