IP/N/1/AUS/I/15  
 
18 June 2013  
(13-3153)  Page: 1/13  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
AUSTRALIA  
This document reproduces the text1 of the Intellectual Property Law Amendment Regulations 2009 
(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 2009 portant modification de la Loi sur la 
propriété intellectuelle (n° 1), notifié par l'Australie le 22 mai 2013 au titre de l'article 63:2 de 
l'Accord (voir le document IP/N/1/AUS/5).  
Consejo de los Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio 
  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
A
USTRALIA  
En el presente documento se reproduce el texto1 del Reglamento de 2009 que modifica la 
legislación relativa a la propiedad intelectual (Nº 1), notificado por Australia el 22 de mayo de 2013 en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IP/N/1/AUS/5). 
                                               
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/AUS/I/15 
 
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  PP 3-13 - Offset (Pdf file attached) 
PP 3 à 13 - Offset (fichier Pdf joint) PP 3-13 - Offset (fichero Pdf adjunto)   
 
0909872C-090612Z.doc 
 
Intellectual Property Law 
Amendment Regulations 2009 
(No. 1)1 
Select Legislative In strument 2009 No. 150 
I, QUENTIN BRYCE, Governor-G eneral of the Commonwealth 
of Australia, acting with the advice of the Federal Executive 
Council, make the following Regulations under the Patents Act 
1990, the Trade Marks Act 1995  and the  Designs Act 2003.  
Dated 24 June 2009 
QUENTIN BRYCE 
Governor-General 
By Her Excellency’s Command 
KIM CARR  
Minister for Innovation, Indus try, Science and Research 
Federal Register of Legislative Instruments F2009L02472
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         - 3 -  
  
Regulation 1 
 
 
2 Intellectual  Property Law Amendment Regulations 2009 
(No. 1) 2009 , 150 
 
 1 Name of Regulations 
  These Regulations are the Intellectual Property Law 
Amendment Regulations 2009 (No. 1). 
2 Commencement   These Regulations commence on 1 July 2009. 
3 Amendment of Patents Regulations 1991  — 
Schedule 1 
 (1) Schedule 1 amends the Patents Regulations 1991 . 
 (2) The amendment made by item [3] of Schedule 1 applies in 
relation to an international a pplication whose international 
filing date is on or after 1 July 2009. 
 (3) The amendments made by items [4] to [7] of Schedule 1 apply 
in relation to an international application for which an 
amendment under Article 19 or 34 of the PCT is made on or 
after 1 July 2009.  
4 Amendment of Patents Regulations 1991  — 
Schedule 2 
  Schedule 2 amends the Patents Regulations 1991 . 
5 Amendment of Trade Marks Regulations 1995 — 
Schedule 3 
  Schedule 3 amends the Trade Marks Regulations 1995 . 
6 Amendment of Designs Regulations 2004  — 
Schedule 4 
  Schedule 4 amends the Designs Regulations 2004 . 
Federal Register of Legislative Instruments F2009L02472
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         - 4 -Amendments of Patents Regulations 1991 relating to the Patent 
Cooperation Treaty Schedule 1 
  
 
 
 
2009, 150 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 3 
 
 Schedule 1 Amendments of Patents 
Regulations 1991 relating to 
the Patent Cooperation Treaty 
(regulation 3) 
   
[1] Subregulation 1.4 (2) 
omit 
1 January 2009 
insert 
1 July 2009 
[2] Schedule 2A, before Table of Provisions 
omit 
and on 1 January 2009. 
insert 
on 1 January 2009, and on 1 July 2009. 
[3] Schedule 2A, Rule 29.4  
substitute 
29.4   Notification of Intent to Ma ke Declaration under Article 14 (4) 
 (a) Before the receiving Office issues any declarati on under Article 14 (4), it shall 
notify the applicant of its intent to issue su ch declaration and the reasons therefor. The 
applicant may, if he disagrees with the tentat ive finding of the receiving Office, submit 
arguments to that effect within two mont hs from the date of  the notification. 
 (b) Where the receiving Office intends to issue a declarati on under Article 14 (4) in 
respect of an element mentioned in Article 11 (1) (iii) (d) or (e), the receiving Office shall, 
in the notification referred to in paragraph (a) of this Rule, invite the applicant to confirm 
in accordance with Rule 20.6 (a) that the element is incorporated by reference under 
Rule 4.18. For the purposes of Rule 20.7 (a) (i),  the invitation sent to the applicant under 
this paragraph shall be considered to be an invitation under Rule 20.3 (a) (ii). 
 (c) Paragraph (b) shall not apply where t he receiving Office has informed the 
International Bureau in accordance with Rule  20.8 (a) of the incompatibility of Rules 
20.3 (a) (ii) and (b) (ii) and 20.6 with  national law applied by that Office. 
Federal Register of Legislative Instruments F2009L02472
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         - 5 -Schedule 1 Amendments of Patents Regulations 1991 relating to the Patent 
Cooperation Treaty 
  
 
 
 
4 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 2009, 150 
 
 [4] Schedule 2A, Rule 46.5 
substitute 
46.5   Form of Amendments  
 (a)    The applicant, when making amendments under Article 19, shall be required to 
submit a replacement sheet or sheets containi ng a complete set of claims in replacement 
of all the claims originally filed. 
 (b)  The replacement sheet or sheets shall be accompanied by a letter which: 
 (i) shall identify the claims which, on account of the amendments, differ from 
the claims originally filed, and shall draw attention to the differences 
between the claims originally fil ed and the claims as amended; 
 (ii) shall identify the claims originally filed which, on account of the 
amendments, are cancelled. 
[5] Schedule 2A, Rule 66.8 (a) 
substitute 
 (a)    Subject to paragraph (b), when amending the description or the drawings, the 
applicant shall be required to submit a r eplacement sheet for every sheet of the 
international application which, on account  of an amendment, differs from the sheet 
previously filed. The replacement sheet or sheets shall be accompanied by a letter which shall draw attention to the differences betwe en the replaced sheets and the replacement 
sheets and shall preferably also expl ain the reasons for the amendment. 
[6] Schedule 2A, after Rule 66.8 (b) 
insert 
 (c)   When amending the claims, Rule 46.5 shall apply mutatis mutandis . The set of 
claims submitted under Rule 46.5 as applicabl e by virtue of this paragraph shall replace 
all the claims originally filed or previously amended under Articles 19 or 34, as the case 
may be. 
[7] Schedule 2A, Rule 70.16 
substitute 
70.16   Annexes to Report 
 (a) Each replacement sheet under Rule 66.8 (a) or (b) shall, unless superseded by 
later replacement sheets under Rule 66.8 (a ) or (b) or amendments resulting in the 
cancellation of entire sheets under Rule 66.8 (b), be annexed to the report. 
 (abis) Replacement sheets under Rule 46. 5 (a) shall, unless superseded or 
considered as reversed by replacement sheets under Rule 66.8 (c), be annexed to the 
report. Replacement sheets under rules 66.8 (c) shall, unless superseded by later 
replacement sheets under Rule 66.8 (c), be annexed to the report. Letters under Rule 
46.5 (b) or Rule 66.8 (a) or (c) shall not be annexed to the report. 
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         - 6 -Amendments of Patents Regulations 1991 relating to the Patent 
Cooperation Treaty Schedule 1 
  
 
 
 
2009, 150 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 5 
 
  (b) Not withstanding paragraphs (a) and (abis), each superseded or reversed 
replacement sheet referred to in those paragraphs shall also be annexed to the report 
where the International Preliminary Examinin g Authority considers that the relevant 
superseding or reversing amendment goes beyo nd the disclosure in the international 
application as filed and the repor t contains an indication referred to in Rule 70.2 (c). In 
such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions. 
Federal Register of Legislative Instruments F2009L02472
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         - 7 -Schedule 2 Other amendments of  Patents Regulations 1991 
  
 
 
 
6 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 2009, 150 
 
 Schedule 2 Other amendments of Patents 
Regulations 1991  
(regulation 4) 
[1] Subregulation 22.13 (2) 
substitute 
 (2) A declaration required by the Act or these Regulations to be 
given to the Commissioner must: 
 (a) be headed with the title  of the matter for which the 
declaration is made; and 
 (b) be expressed in the first person; and 
 (c) state the name and address of the person making the 
declaration; and 
 (d) state the name and title of the person before whom the 
declaration is made; and 
 (e) state the date on which, and the place at which, the 
declaration is made; and 
 (f) be divided into paragraphs, each of which must be: 
 (i) numbered consecutively; and 
 (ii) as far as practicable, confined to 1 subject. 
 (2A) If the declaration is made on behalf of another person, it must 
also state the other person’s name and address. 
 (2B) If the declaration is made for the purposes of a business whose 
details are set out in the declaration, it must also state: 
 (a) the office or position in the business held by the person 
who makes the declaration; and 
 (b) the address of the place at  which the business is conducted 
or principally conducted. 
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         - 8 -Other amendments of Patents Regulations 1991 Schedule 2 
  
 
 
 
2009, 150 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 7 
 
 [2] Paragraph 22.13 (3) (f) 
substitute 
 (f) a person before whom a statutory declaration may be 
made under the Statutory Declarations Act 1959 or the 
law of the State, Territory or foreign country where the 
declaration is made; or 
[3] Subregulation 22.13 (4) 
omit 
[4] Further amendments — replace ‘practice’ with 
‘practise’ 
  The following provisions are amended by omitting ‘practice’ 
and inserting ‘practise’: 
 • paragraph 20.6 (2) (b) 
 • paragraph 20.6 (3) (b) 
 • paragraph 20.8 (3) (b). 
[5] Further amendments  — replace second mention of 
‘practice’ 
  The following provisions are amended by omitting the second 
mention of ‘practice’ an d inserting ‘practise’: 
 • paragraph 20.3 (1) (c) 
 • subregulation 20.8 (1) 
 • subregulation 20.8 (2) 
 • subregulation 20.8 (4) 
 • subregulation 20.8 (5) 
 • subregulation 20.13 (1). 
Federal Register of Legislative Instruments F2009L02472
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         - 9 -Schedule 3 Amendments of Trade Marks Regulations 1995 
  
 
 
 
8 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 2009, 150 
 
 Schedule 3 Amendments of Trade Marks 
Regulations 1995 
(regulation 5) 
[1] Paragraph 20.8 (3) (b) 
omit 
practice 
insert 
practise 
[2] Subregulation 21.6 (2)  
substitute 
 (2) A declaration required by the Act or these Regulations to be 
given to the Registrar must: 
 (a) be headed with the title  of the matter for which the 
declaration is made; and 
 (b) be expressed in the first person; and 
 (c) state the name and address of the person making the 
declaration; and 
 (d) state the name and title of the person before whom the 
declaration is made; and 
 (e) state the date on which, and the place at which, the 
declaration is made; and 
 (f) be divided into paragraphs, each of which must be:  (i) numbered consecutively; and 
 (ii) as far as practicable, confined to 1 subject. 
 (2A) If the declaration is made on behalf of another person, it must 
also state the other person’s name and address. 
 (2B) If the declaration is made for the purposes of a business whose 
details are set out in the declaration, it must also state: 
 (a) the office or position in the business held by the person 
who makes the declaration; and 
Federal Register of Legislative Instruments F2009L02472
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         - 10 -Amendments of Trade Marks Regulations 1995 Schedule 3 
  
 
 
 
2009, 150 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 9 
 
  (b) the address of the place at  which the business is conducted 
or principally conducted. 
[3] Subregulation 21.6 (4) 
omit 
[4] Further amendments — replace second mention of 
‘practice’ 
  The following provisions are amended by omitting the second 
mention of ‘practice’ an d inserting ‘practise’: 
 • paragraph 20.3 (1) (b) 
 • subregulation 20.8 (1) 
 • subregulation 20.8 (2) 
 • subregulation 20.8 (4) 
 • subregulation 20.8 (5). 
Federal Register of Legislative Instruments F2009L02472
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         - 11 -Schedule 4 Amendments of Designs Regulations 2004 
  
 
 
 
10 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 2009, 150 
 
 Schedule 4 Amendments of Designs 
Regulations 2004 
(regulation 6) 
[1] Subregulation 11.26 (1) 
substitute 
 (1) A declaration required by the Act or these Regulations to be 
given to the Registrar must: 
 (a) be headed with the title  of the matter for which the 
declaration is made; and 
 (b) be expressed in the first person; and 
 (c) state the name and address of the person making the 
declaration; and 
 (d) state the name and title of the person before whom the 
declaration is made; and 
 (e) state the date on which, and the place at which, the 
declaration is made; and 
 (f) be divided into paragraphs, each of which must be: 
 (i) numbered consecutively; and 
 (ii) as far as practicable, confined to 1 subject. 
 (1A) If the declaration is made on behalf of another person, it must 
also state the other person’s name and address. 
 (1B) If the declaration is made for the purposes of a business whose 
details are set out in the declaration, it must also state: 
 (a) the office or position held in the business by the person 
who makes the declaration; and 
 (b) the address of the place at  which the business is conducted 
or principally conducted. 
Federal Register of Legislative Instruments F2009L02472
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         - 12 -Amendments of Designs Regulations 2004 Schedule 4 
  
 
 
 
2009, 150 Intellectual Property Law Amendment Regulations 2009 
(No. 1) 11 
 
 [2] Paragraphs 11.26 (2) (f) and (g) 
substitute 
 (f) a person before whom a statutory declaration may be 
made under the Statutory Declarations Act 1959 or the 
law of the State, Territory or foreign country where the 
declaration is made; or 
 (g) a diplomatic or  consular officer. 
[3] After subregulation 11.26 (2) 
insert 
 (3) In this regulation: 
diplomatic or consular officer  means a person who holds any 
of the following offices of the Commonwealth in a country 
other than Australia: 
 (a) ambassador; 
 (b) high commissioner; 
 (c) minister;  (d) chargé d’affaires; 
 (e) counsellor or second or thir d secretary at an embassy, high 
commission or other post; 
 (f) consul-general;  (g) consul; 
 (h) vice-consul. 
Note 
1. All legislative instruments and comp ilations are registered on the Federal 
Register of Legislative Instruments kept under the Legislative 
Instruments Act 2003. See http://www.frli.gov.au . 
 
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