WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/AUS/D/4/Add.1 
IP/N/1/AUS/I/4/Add.2 
IP/N/1/AUS/P/3/Add.2 IP/N/1/AUS/P/6/Add.3 IP/N/1/AUS/T/4/Add.2 
3 July 2008 
 
(08-3177) 
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 
 
Addendum  
 
 The present document reproduces the text1 of the Intellectual Property Legislation 
Amendment Regulations 2007 (No. 1) - SLI 2007 No . 40, notified by Australia under Article 63.2 of 
the Agreement (see document IP/N/1/AUS/3). 
 
 
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 
 
Addendum  
 
 Le présent document contient le texte1 du Règlement n° 1 de 2007 portant modification de la 
Loi sur la propriété intellectuelle - SLI 2007 n° 40, no tifié par l'Australie au titre de l'article 63:2 de 
l'Accord (voir le document IP/N/1/AUS/3). 
 
 
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 
 
AUSTRALIA 
 
Addendum  
 
 En el presente documento se reproduce el texto1 del Reglamento de modificación de la 
legislación sobre propiedad intelectual de 2007 (Nº 1)  - SLI 2007 Nº 40, notificado por Australia en 
virtud de lo dispuesto en el párrafo 2 del artícul o 63 del Acuerdo (véase el documento IP/N/1/AUS/3). 
                                                      
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 2 
  
   
 
 
 
INTELLECTUAL PROPERTY LEGISLATION 
AMENDMENT REGULATIONS 2007 (NO. 1)1 
Select Legislative In strument 2007 No. 40 
I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, 
acting with the advice of the Federal Executiv e Council, make the following Regulations 
under the Designs Act 2003, the Olympic Insignia Protection Act 1987, the Patents Act 1990, 
the Plant Breeder’s Rights Act 1994 and the  Trade Marks Act 1995 . 
Dated 22 March 2007 
P. M. JEFFERY 
Governor-General 
By His Excellency’s Command 
IAN MACFARLANE  
Minister for Industry, Tourism and Resources  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 3 
  
  Contents 
      1  Name of Regulations 
      2 Commencement       3 Amendment of Designs Regulations 2004  
      4 Amendment of Olympic Insignia Protection Regulations 1993  
      5 Amendment of Patents Regulations 1991  
      6 Amendment of Plant Breeder’s Rights Regulations 1994  
      7 Amendment of Trade Marks Regulations 1995 
      8 Transitional provisions for Schedule 4 — amendments of Patents 
Regulations 1991  commencing on 1 April 2007 
      9 Transitional provisions for Schedule 6 — amendments of Trade Marks 
Regulations 1995  commencing on 27 March 2007 
     10 Transitional provisions for Schedule 7 — amendments of Trade Marks 
Regulations 1995  commencing on commencement of  Part 2 of Schedule 1 to 
the Trade Marks Amendment Act 2006 
 
Schedule 1 Amendments of Designs Regulations 2004  commencing on 27 March 2007 
 Schedule 2 Amendment of Olympic Insignia Protection Regulations 1993  commencing 
on 27 March 2007 
 Schedule 3 Amendments of P atents Regulations 1991  commencing on 27 March 2007 
 Schedule 4 Amendments of P atents Regulations 1991  commencing on 1 April 2007 
 Schedule 5 Amendment of Plant Breeder’s Rights Regulations 1994  commencing 
on 27 March 2007 
 
Schedule 6 Amendments of Trade Marks Regulations 1995  commencing 
on 27 March 2007 
 Schedule 7 Amendments of Trade Marks Regulations 1995  commencing on the 
commencement of Part 2 of Schedule 1 to the Trade Marks Amendment 
Act 2006  
 Schedule 8 Amendment of Trade Marks Regulations 1995  commencing 
on 1 April 2007 
_______________ 
 
 IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 4 
  
  1 Name of Regulations 
  These Regulations are the Intellectual Property Legislation Amendment 
Regulations 2007 (No. 1).  
2 Commencement 
  These Regulations commence as follows: 
 (a) on 27 March 2007 — regulations 1 to  10 and Schedules 1, 2, 3, 5 and 6; 
 (b) on 1 April 2007  — Schedules 4 and 8; 
 (c) on the commencement of Part 2 of Schedule 1 to the Trade Marks Amendment 
Act 2006  — Schedule 7. 
3 Amendment of Designs Regulations 2004  
  Schedule 1 amends the Designs Regulations 2004 . 
4 Amendment of Olympic Insignia Protection Regulations 1993  
  Schedule 2 amends the Olympic Insignia Protection Regulations 1993 . 
5 Amendment of Patents Regulations 1991  
  Schedules 3 and 4 amend the Patents Regulations 1991 . 
6 Amendment of Plant Breeder’s Ri ghts Regulations 1994  
  Schedule 5 amends the Plant Breeder’s Rights Regulations 1994 . 
7 Amendment of Trade Marks Regulations 1995  
  Schedules 6, 7 and 8 amend the Trade Marks Regulations 1995 . 
8 Transitional provisions for Schedule 4 — amendments of Patents 
Regulations 1991  commencing on 1 April 2007 
 (1) Subject to subregulation (2), the am endments made by Schedule 4 apply to an 
international applicati on whose filing date is on or after 1 April 2007. 
 (2) An amendment made by an item of Schedul e 4 mentioned in an item in table 1, to a 
provision of the Rules mentioned in that ta ble, does not apply to  an international 
application in respect of which 1 or more elements referred to in Article 11 (1) (iii) 
were first received by the receiving Office before 1 April 2007.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 5 
  
  Table 1 
Item Item of Schedule 4 Provision of the Rules 
1 29 Rule 4.1 (c) (iv) 
2 31 Rule 4.18 
Rule 4.19 
3 35 Rule 12.1bis 
4 38 Rule 12.3 5 39 Rule 20.1 
Rule 20.2 Rule 20.3 Rule 20.4 Rule 20.5 Rule 20.6 Rule 20.7 Rule 20.8 
6 40 Rule 21.2 7 41 Rule 22.1 8 42 Rule 26.1 
Rule 26.2 
9 43 and 44 Rule 26.3
ter 
10 45 Rule 26.4 
Rule 26.5 
11 55 Rule 48.2 (b) (v) 12 58 Rule 51.1 
Rule 51.2 
13 59 Rule 51
bis.1 (e) 
14 61 Rule 55.2 15 69 and 70 Rule 76.5 16 71 Rule 82
ter.1 
 (3) The amendments made by Schedule 4 do not apply to an inte rnational application 
whose filing date is before 1 April 2007, except as mentioned in subregulation (4). 
 (4) For subregulation (3), an amendment made by an item of Schedule 4 mentioned in 
an item in table 2, to a provision of the Ru les mentioned in that table, applies to an 
international application whose filing date is before 1 April 2007, in the 
circumstance or subject to the condit ion mentioned in the item in table 2. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 6 
  
  Table 2 
Item Item of 
Schedule 4 Provision of the Rules Circumstance or condition 
1 48 and 49 Rule 34.1 Applies in relation to any international 
search carried out on or after 1 April 2007 
2 52 Rule 43.4 Applies in relation to an international 
application in respect of which an international search report is established on or after 1 April 2007 
3 53 
54 65 66 67 Rule 43.6
bis 
Rule 43bis.1 (b) 
Rule 66.1 (d) Rule 66.4
bis 
Rule 70.2 (e) Apply in relation to international search 
reports, written opinions and international preliminary examination reports established on or after 1 April 2007, as if references to rectifications of obvious mistakes authorised under Rule 91.1 were references to rectifications of obvious errors authorised under that Rule before 1 April 2007 
4 56 Rule 48.3 (c) Applies in relation to an international 
application that is published under Article 21 on or after 1 April 2007 
5 57 Rule 49
ter.2 Applies in respect of acts mentioned in 
Article 22 (1) that are performed on or after 1 April 2007 
6 60 
61 62 62 Rule 54
bis.1 (a) 
Rule 55.2 (ater) 
Rule 55.2 (c) Rule 55.2 (d) Apply in relation to an international 
application in respect of which a demand for international preliminary examination is made on or after 1 April 2007 
7 70 Rule 76.5 Applies, to the extent that it has the 
effect of making Rule 49
ter.2 applicable, 
in respect of acts mentioned in Article 39 (1) (a) that are performed on or after 1 April 2007 
 
         (5) In relation to the amendment made by item 39 of Schedule 4, information as to 
incompatibility given to the International Bureau under Rule 20.4 (d) 
before 1 April 2007 is taken to rema in effective under Rule 20.1 (d) on or 
after 1 April 2007. 
 (6) In relation to the amendment made by item 60 of Schedule 4, information as to 
incompatibility given to the In ternational Bureau under Rule 51bis.1 (f) in relation 
to Rule 51bis.1 (e) before 1 April 2007 is ta ken to remain effective under 
Rule 51bis.1 (f) in relation to Rule 51bis.1 (e) on or after 1 April 2007.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 7 
  
  9 Transitional provisions for Schedule 6 — amendments of Trade Marks 
Regulations 1995  commencing on 27 March 2007 
 (1) The amendment made by item 3 of Sc hedule 6 applies in re lation to a decision 
made on or after the co mmencement of the item. 
 (2) The amendments made by items 4 and 5 of Schedule 6 apply in relation to an 
application for assignment of a certification trade mark made on or after the 
commencement of the items. 
 (3) The amendments made by items 7 and 8 of Schedule 6 apply in relation to the 
acceptance of an IRDA whether the accepta nce occurred before, on or after the 
commencement of the items. 
 (4) The amendment made by item 10 of Schedul e 6 applies in relation to a trade mark 
or protected international trade ma rk that became protected after the 
commencement of the item. 
 (5) The amendments made by items 14 and 15 of Schedule 6 apply in relation to a fee 
that becomes payable after th e commencement of the items. 
10 Transitional provisions for Schedule 7 — amendments of Trade Marks 
Regulations 1995  commencing on commencement of Part 2 of 
Schedule 1 to the Trade Marks Amendment Act 2006  
 (1) The amendments made by items 2, 4, 6, 7 and 38 of Schedule 7 apply in relation to 
a divisional application made on or afte r the commencement of that Schedule. 
        (2)  The amendments made by items  5, 21 and 44 of Schedule 7 apply in relation to 
trade marks whose registration expires at least 12 months after the commencement of that Schedule. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 8 
  
  Schedule 1 Amendments of Designs Regulations 2004  
commencing on 27 March 2007 
(regulation 3) 
   
[1] After regulation 11.31 
insert 
11.32 Period for doing certain act s — office not open for business 
  For subsection 136A (1) of the Act, the circumstance is that the act is done at: 
 (a) the Designs Office; or 
 (b) a sub-office of the Designs Office; 
that was not open for business. 
Note   Subsection 136A (1) provides as follows: 
‘(1) If the last day of a period provided by this Act (except this section) or the regulations for 
doing an act is a day when the Designs Office, or a sub-office of the Designs Office, is not open for 
business, the act may be done in prescribed circumstances on the next day when the office or 
sub-office is open for business.’. 
11.33 Days when office not open for business 
 (1) For paragraph 136A (2) (a) of the Act, the days on which the Designs Office, or a 
sub-office of the Designs Office, is not open for business are: 
 (a) Saturday; and  (b) Sunday; and 
 (c) Australia Day; and 
 (d) Anzac Day. 
 (2) For paragraph 136A (2) (b) of the Act, the Director General of  IP Australia is a 
prescribed person. 
 (3) For paragraph 136A (2) (b) of the Ac t, the prescribed way of publishing a 
declaration is in the Offi cial Journal of Designs. 
11.34 Period for doing certain acts — act s to which section 136A does not 
apply 
  For subsection 136A (7) of th e Act, an act done in relati on to proceedings in a court 
or a tribunal is prescribed.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 9 
  
  [2] Schedule 1 
after 
Mongolia 
insert 
Montenegro 
[3] Schedule 1 
omit 
Serbia and Montenegro 
insert 
Serbia 
[4] Schedule 1 
after 
Viet Nam 
insert 
     Yemen IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 10 
  
  Schedule 2 Amendment of Olympic Insignia Protection 
Regulations 1993  commencing 
on 27 March 2007 
(regulation 4) 
[1] After regulation 6 
insert 
6A Period for doing certain act s — office not open for business 
  For subsection 14A (1) of the Act, the ci rcumstance is that the act is done at the 
Designs Office.  
Note   Subsection 14A (1) provides as follows: 
‘(1) If the last day of a period provided by this Chapter (except this section), or regulations made 
for the purposes of this Chapter, for doing an act  is a day when the Designs Office is not open for 
business, the act may be done in prescribed circ umstances on the next day when the office is open 
for business.’. 
6B Days when office not open for business 
 (1) For paragraph 14A (2) (a) of the Act, th e days on which the Designs Office is not 
open for business are: 
 (a) Saturday; and  (b) Sunday; and 
 (c) Australia Day; and 
 (d) Anzac Day. 
 (2) For paragraph 14A (2) (b) of the Act, the Director General of IP Australia is a 
prescribed person. 
         (3) For paragraph 14A (2) (b) of  the Act, the prescrib ed way of publishing a 
declaration is in the Offi cial Journal of Designs. 
6C Period for doing certain acts — acts to which section 14A does not 
apply 
  For subsection 14A (7) of the Act, an act  done in relation to proceedings in a court 
or a tribunal is prescribed.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 11 
  
  Schedule 3 Amendments of Patents Regulations 1991  
commencing on 27 March 2007 
(regulation 5) 
[1] Regulation 6A.2 
substitute 
6A.2 Divisional applicat ions: innovation patents 
 (1) For subsection 79C (1) of the Act, a divisional application must be made in 
accordance with section 29 of the Act. 
 (2) For subparagraph 79C (2) (b) (iv) of the Act, the prescribed period is 1 month from 
the day on which the Commissioner publis hes, under paragraph 101E (d) of the 
Act, a notice of the occurrence of the exam ination of the first patent mentioned in 
subsection 79C (1) of the Act. 
[2] Subparagraph 12.1 (2) (a) (iv) 
substitute 
 (iv) if the applicant relies on the ground mentione d in paragraph 133 (2) (a) 
of the Act — facts supporting the assertion that the reasonable 
requirements of the public with respect  to the patented invention have 
not been satisfied; and  
 (iva) if the applicant relies on th e ground mentioned in paragraph 133 (2) (b) 
of the Act — facts supporting the assertion that the patentee has 
contravened, or is contravening, Part IV of the Trade Practices Act 1974  
or an application law (as defined in section 150A of that Act) in 
connection with the patent; and 
[3] After regulation 22.10A 
insert 
22.10AA   Period for doing certain acts — office not open for business 
  For subsection 222A (1) of the Act, the circumstance is that the act is done at: 
 (a) the Patent Office; or 
 (b) a sub-office of the Patent Office; 
that was not open for business. 
Note   Subsection 222A (1) provides as follows: 
‘(1) If the last day of a period provided by this Act (except this section) for doing an act is a day 
when the Patent Office, or a sub-office of the Patent Office, is not open for business, the act may be IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 12 
  
  done in prescribed circumstances on the next day when the office or sub-office is open for 
business.’. 
22.10AB   Days when office not open for business 
 (1) For paragraph 222A (2) (a) of the Act, the days on which the Patent Office, or a 
sub-office of the Patent Office,  is not open for business are: 
 (a) Saturday; and  (b) Sunday; and 
 (c) Australia Day; and 
 (d) Anzac Day. 
 (2) For paragraph 222A (2) (b) of the Act, the Director General of  IP Australia is a 
prescribed person. 
 (3) For paragraph 222A (2) (b) of the Ac t, the prescribed way of publishing a 
declaration is in the Official Journal . 
22.10AC   Period for doing certain acts — acts to which section 222A does not 
apply 
  For subsection 222A (7) of the Act,  the following acts are prescribed: 
 (a) an act done in opposition proceedings , other than the filing of a notice or 
request with the Patent Office,  under the following provisions: 
 (i) Chapter 5, 6, 9A, 10 or 22 of the Act;  
 (ii) Chapter 5, 10 or 22 of these Regulations;  (b) the act of lodging a return re quired under section 76A of the Act; 
 (c) an act done in relation to pro ceedings in a court or a tribunal; 
 (d) an act done under Chapter 20 of these Regulations. 
[4] Schedule 4 
after 
Mongolia 
insert 
Montenegro 
[5] Schedule 4 
omit 
Serbia and Montenegro 
insert 
Serbia  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 13 
  
  [6] Schedule 4 
after 
Viet Nam 
insert      Yemen IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 14 
  
  Schedule 4 Amendments of Patents Regulations 1991  
commencing on 1 April 2007 
(regulations 5 and 8) 
[1] Subregulation 1.4 (2) 
omit 
1 April 2006 
insert 
1 April 2007 
[2] After sub-subparagraph 3.12 (2) (c) (ii) (A) 
insert 
 (AA) an application made in Austra lia more than 12 months before the 
international filing date of th e PCT application, for which: 
 (I) a receiving Office has restored priority under Rule 26bis.3; 
and 
 (II) the restored priority has not been found to be ineffective 
by the Commissioner or a prescribed court under Rule 49
ter.1; or 
[3] After sub-subparagraph 3.12 (2) (c) (ii) (B) 
insert 
 (BB) a basic application made more than 12 months before the 
international filing date of the PC T application, that is the first 
application made in a Conventio n country in respect of the 
invention, for which: 
 (I) a receiving Office has restored priority under Rule 26bis.3; 
and 
 (II) the restored priority has not been found to be ineffective 
by the Commissioner or a prescribed court under 
Rule 49ter.1; or 
[4] Subregulations 8.3 (1BA), (1BB) and (1BC) 
substitute 
 (1BA) Subsection 89 (5):  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 15 
  
  substitute 
 (5) If: 
 (a) a PCT application has been amended under Article 19 of the PCT before the 
applicant meets the requiremen ts of subsection (3); or 
 (b) a PCT application has been rect ified under Rule 91 of the Regulations 
mentioned in the definition of PCT in Schedule 1 before the applicant meets 
the requirements of subsection (3); 
then the description, drawings and claims contained in the application are, for the 
purposes of this Act, to be taken to have been amended: 
 (c) on the day the amendment was made; or  (d) unless the Commissione r disregards the rectific ation under Rule 91.3 (f) — on 
the day the rectification was effective. 
5] After subregulation 8.3 (4) 
insert 
 (5) Schedule 1, definition of international filing date , including the cross-reference to 
section 10: 
substitute 
‘international filing date , in relation to an intern ational application, means: 
 (a) the date given to the international application as its international filing date 
under Article 11 of the PCT; or 
 (b) if that date is revi sed under Article 14 of the PC T — that international filing 
date as so revised; or 
 (c) if the Commissioner has treated anothe r date as the international filing date 
under Rule 82
ter — that international filing date as so treated. 
[See also section 10] ’. 
[6] Schedule 2A, before Table of Provisions 
omit 
and on 1 April 2006. 
insert 
on 1 April 2006, and on 1 April 2007. 
[7] Schedule 2A, Table of Pr ovisions, after Rule 2.3 
insert 
 2.4 “Priority Period” IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 16 
  
  [8] Schedule 2A, Table of Pr ovisions, after Rule 4.17 
insert 
 4.18 Statement of Incorporation by Reference 
 4.19 Additional matter 
9] Schedule 2A, Table of Provisions, Rule 12 
substitute 
Rule 12 Language of the International Applic ation and Translations for the Purposes 
of International Search a nd International Publication 
[10] Schedule 2A, Table of Provisions, after Rule 12.1 
insert 
 12.1bis Language of Elements and Parts Furnished under Rule 20.3, 20.5 or 20.6 
 12.1ter Language of Indications Furnished under Rule 13bis.4 
[11] Schedule 2A, Table of Provisions , Rule 20, Rule 20.1, Rule 20.2, 
Rule 20.3, Rule 20.4, Rule 20.5, Ru le 20.6, Rule 20 .7, Rule 20.8 and 
Rule 20.9 
substitute 
Rule 20 International Filing Date 
 20.1 Determination under Article 11 (1) 
 20.2 Positive Determination under Article 11 (1)  20.3 Defects under Article 11 (1) 
 20.4 Negative Determination under Article 11 (1) 
 20.5 Missing Parts  20.6 Confirmation of Incorporation by Reference of Elements and Parts 
 20.7 Time Limit 
 20.8 Incompatibility with National Laws 
[12] Schedule 2A, Table of Provisions, after Rule 21.1 
insert 
 21.2 Certified Copy for the Applicant 
[13] Schedule 2A, Table of Provisions, Rule 26.1 
substitute 
 26.1 Invitation under Articl e 14 (1) (b) to Correct  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 17 
  
  [14] Schedule 2A, Table of Provisions, Rule 26.6 
omit 
[15] Schedule 2A, Table of Provisions, Rule 26bis.2 
substitute 
 26bis.2 Defects in Priority Claims 
 26bis.3 Restoration of Right of Priority by Receiving Office 
[16] Schedule 2A, Table of Provisions, after Rule 38.2 
insert 
 38.3 Modification of Abstract 
[17] Schedule 2A, Table of Provisions, after Rule 43.6 
insert 
 43.6bis Consideration of Rectifica tions of Obvious Mistakes 
[18] Schedule 2A, Table of Provisions, Rule 43bis 
substitute 
Rule 43bis Written Opinion of the International Searching Authority 
[19] Schedule 2A, Table of Provisions, Rule 48.3 
substitute 
 48.3 Languages of Publication 
[20] Schedule 2A, Table of Provisions, after Rule 49bis.2 
insert 
Rule 49ter Effect of Restoration of Right of Pr iority by Receiving Office; Restoration 
of Right of Priority  by Designated Office 
 49ter.1 Effect of Restoration of Right of Priority by Receiving Office 
 49ter.2 Restoration of Right of Priority by Designated Office 
[21] Schedule 2A, Table of Provisions, Rule 51.2 
substitute 
 51.2 Copy of the Notification IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 18 
  
  [22] Schedule 2A, Table of Provisions, after Rule 51bis.2 
insert 
 51bis.3 Opportunity to Comply with National Requirements 
[23] Schedule 2A, Table of Provisions, Rules 54bis and 54bis.1 
omit 
[24] Schedule 2A, Table of Provisions, after Rule 54.4 
insert 
Rule 54bis Time Limit for Making a Demand 
 54bis.1 Time Limit for Making a Demand 
[25] Schedule 2A, Table of Provisions, Rule 66.4bis 
substitute 
 66.4bis Consideration of Amendments, Argu ments and Rectifications of Obvious 
Mistakes 
[26] Schedule 2A, Table of Provisions, Rule 76 
substitute 
Rule 76 Translation of Priority Docume nt; Application of Certain Rules to 
Procedures Before Elected Offices 
[27] Schedule 2A, Table of Provisions, Rules 91 and 91.1 
substitute 
Rule 91 Rectification of Obvi ous Mistakes in the Interna tional Application and Other 
Documents 
 91.1 Rectification of  Obvious Mistakes 
 91.2 Requests for Rectification 
 91.3 Authorization and Eff ect of Rectifications 
[28] Schedule 2A, after Rule 2.3 
insert 
2.4   “Priority Period” 
 (a) Whenever the term “priority period” is used in relation to a priority claim, it shall be construed as 
meaning the period of 12 months from th e filing date of the earlier application whose priority is so claimed. The 
day of filing of the earlier application shall not be included in that period. 
 (b) Rule 80.5 shall apply mutatis mutandis  to the priority period.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 19 
  
  [29] Schedule 2A, Rule 4.1 (c) (iii) 
substitute 
 (iii) declarations as provided in Rule 4.17, 
 (iv) a statement as provided in Rule 4.18, 
 (v) a request for restoration of the right of priority. 
[30] Schedule 2A, Rule 4.10 (a) 
substitute 
 (a) Any declaration referred to in Article 8 (1 ) (“priority claim”) may claim the priority 
of one or more earlier applications filed either in or for any country party to the Paris Convention for 
the Protection of Industrial Property or in or for any Member of the World Trade Organization that is 
not party to that Convention. Any priority claim sh all be made in the requ est; it shall consist of a 
statement to the effect that the priority of an  earlier application is claimed and shall indicate: 
 (i) the date on which the ear lier application was filed; 
 (ii) the number of t he earlier application; 
 (iii) where the earlier application is a national applic ation, the country party to the Paris Convention for 
the Protection of Industrial Property or the Mem ber of the World Trade Organization that is not 
party to that Convention in which it was filed; 
 (iv) where the earlier application is a regional a pplication, the authority entru sted with the granting of 
regional patents under the applic able regional patent treaty; 
 (v) where the ear lier application is  an international applic ation, the receiving Office with which it was 
filed. 
[31] Schedule 2A, Rule 4.18 
substitute 
4.18   Statement of Incorporation by Reference  
Where the international applicati on, on the date on which one or more elements referred to in 
Article 11  (1) (iii) were first received by the receiving Office, claims the prio rity of an earlier  application, the 
request may contain a statement that, where an elem ent of the international application referred to in 
Article 11  (1) (iii) (d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5  (a) is not 
otherwise contained in the international  application but is completely contain ed in the earlier application, that 
element or part is, subject to confirmation under Rule  20.6, incorporated by reference in the international 
application for the purposes of Rule 20.6.  Such a statement, if not contained in the request on that date, may be 
added to the request if, and only if, it was otherwise cont ained in, or submitted with, the international application 
on that date. 
4.19   Additional Matter  
 (a) The request shall contain no matter other than that specified in Rules 4.1 to 4.18, provided that the 
Administrative Instructions may permit, but cannot make mandatory, the inclus ion in the request of any additional 
matter specified in the Administrative Instructions. 
 (b) If the request contains matter other  than that specified in Rule s 4.1 to 4.18 or permitted under 
paragraph (a) by the Admi nistrative Instructions, the receiving Office shall ex officio  delete the additional matter. 
[32] Schedule 2A, Rule 11.9 (d) 
substitute 
 (d) All text matter shall be in characters the capital letters of which are not less than 0.28 
cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2, IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 20 
  
  provided that any text matter in the request may be  in characters the capital letters of which are not 
less than 0.21 cm high. 
[33] Schedule 2A, Rule 11.14 
substitute 
11.14   Later Documents  
Rules 10, and 11.1 to 11.13, also apply to any doc ument—for example, replacement sheets, amended 
claims, translations—submitted after the f iling of the international application. 
[34] Schedule 2A, Rule 12, heading 
substitute 
Rule 12  
Language of the International Application 
and Translations for the Purposes of International Search 
and International Publication  
[35] Schedule 2A, after Rule 12.1 
insert 
12.1bis   Language of Elements and Parts Furnished under Rule 20 .3, 20 .5 or 20 .6 
An element referred to in Article 11  (1) (iii) (d) or (e) furnished by the applicant under Rule 20.3  (b) or 20.6  (a) 
and a part of the description, claims or drawi ngs furnished by the applicant under Rule 20.5  (b) or 20.6  (a) shall 
be in the language of the international application as filed or, where a trans lation of the application is required 
under Rule 12.3  (a) or 12.4  (a), in both the language of the application as filed and the language of that 
translation. 
12.1ter   Language of Indications Furnished under Rule 13bis.4 
Any indication in relation to deposited biological material furnished under Rule 13bis.4 shall be in the language 
in which the international application is  filed, provided that, where a translati on of the internati onal application is 
required under Rule 12.3  (a) or 12.4  (a), any such indication shall be furnished in both the language in which the 
application is filed and the l anguage of that translation. 
[36] Schedule 2A, Rule 12.2 (b) 
substitute 
 (b) Any rectification under Rule 91.1 of an obvious mist ake in the international application shall be in the 
language in which the application is filed, provided that: 
 (i) where a translation of the internatio nal application is required under Rule 12.3  (a), 12.4  (a) 
or 55.2  (a), rectifications referred to in Rule 91.1  (b) (ii) and (iii) shall be filed in both the language 
of the application and the l anguage of that translation; 
 (ii) where a translation of the request is required under Rule 26.3ter (c), rectifications referred to in Rule 
91.1 (b) (i) need only be filed in the language of that translation. 
[37] Schedule 2A, Rule 12.2 (c) 
substitute 
 (c) Any correction under Rule 26 of a defect in the in ternational application shall be in the language in which 
the international application is filed. Any correction under Rule 26 of a defect in a translation of the international 
application furnished under Rule 12.3 or 12.4, any correction under Rule 55.2  (c) of a defect in a translation  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 21 
  
  furnished under Rule 55.2  (a), or any correction of a defect in a translation of the request furnished under 
Rule 26.3ter (c), shall be in the language of the translation. 
[38] Schedule 2A, Rule 12.3 (c) 
omit 
Rule 20.5 (c) 
insert 
Rule 20.2 (c) 
[39] Schedule 2A, Rule 20 
substitute 
Rule 20 
International Filing Date 
20.1   Determination under Article 11 (1)  
 (a) Promptly after receipt of the paper s purporting to be an internationa l application, the receiving Office 
shall determine whether the papers fulf ill the requirements of Article 11  (1). 
 (b) For the purposes of Article 11  (1) (iii) (c), it shall be sufficient to indicate the name of the applicant in a 
way which allows the identity of the applicant to be es tablished even if the name is misspelled, the given names 
are not fully indicated, or, in the case  of legal entities, the indication of the name is abbreviated or incomplete. 
 (c) For the purposes of Article 11  (1) (ii), it shall be sufficient that the pa rt which appears to be a description 
(other than any sequence listing part t hereof) and the part which appears to be a claim or claims be in a language 
accepted by the receivi ng Office under Rule 12.1  (a). 
 (d) If, on October 1, 1997, paragraph (c) is not compatible with the natio nal law applied by the receiving 
Office, paragraph (c) shall not apply to t hat receiving Office for as  long as it continues no t to be compatible with 
that law, provided that  the said Office informs the International Bu reau accordingly by De cember 31, 1997. The 
information received shall be promptly published by the International Bureau in the Gazette. 
20.2   Positive Determination under Article 11 (1)  
 (a) If the receiving Office determines that, at the time of receipt of  the papers purpor ting to be an 
international application, t he requirements of Article 11  (1) were fulfilled, the receiving Office shall accord as the 
international filing date the date of rece ipt of the international application. 
 (b) The receiving Office shall stamp t he request of the international a pplication which it  has accorded an 
international filing date as prescribed by the Administ rative Instructions. The copy whose request has been so 
stamped shall be the record copy of  the international application. 
 (c) The receiving Office shall promptly  notify the applic ant of the international application num ber and the 
international filing date. At th e same time, it shall send to the International Bureau a copy of the notification sent 
to the applicant, except where it has already sent, or is sending at the same time, the record copy to the 
International Bureau under Rule 22.1  (a). 
20.3   Defects under Article 11 (1)  
 (a) Where, in determining whether t he papers purporting to be an international application fulfill the 
requirements of Article 11  (1), the receiving Office finds that an y of the requirements of Article 11  (1) are not, or 
appear not to be, fulfilled, it shall promptly invite the applicant, at the applicant’s option: 
 (i) to furnish the required correction under Article 11  (2); or 
 (ii) where the requirements concerned are thos e relating to an element referred to in Article 
11 (1) (iii) (d) or (e), to confirm in accordance with Rule 20.6  (a) that the element is incorporated by 
reference under Rule 4.18; 
and to make observations, if any, within the applicable ti me limit under Rule 20.7. If t hat time limit expires after 
the expiration of 12 months from the f iling date of any applicatio n whose priority is clai med, the rece iving Office 
shall call that circumstance to the attention of the applicant. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 22 
  
   (b) Where, following an invitation under paragraph (a) or otherwise: 
 (i) the applicant furn ishes to the receiving Office the re quired correction under Article 11  (2) after the 
date of receipt of the purported international application but on a later date falling within the 
applicable time limit  under Rule 20.7, the rece iving Office shall accord that later date as the 
international filing date and proceed as provided in Rule 20.2  (b) and (c); 
 (ii) an element referred to in Article 11  (1) (iii) (d) or (e) is, under Rule 20.6  (b), considered to have 
been contained in the international application on the date on which one or more elements referred 
to in Article 11  (1) (iii) were first received by the receivin g Office, the receiving Office shall accord 
as the international filing dat e the date on which all of t he requirements of Article 11  (1) are fulfilled 
and proceed as provided in Rule 20.2  (b) and (c). 
(c)  If the receiving Office late r discovers, or on the basis of  the applicant’s  reply realizes, that  it has erred in 
issuing an invitation under paragraph (a) since the requirements of Article 11  (1) were fulfilled when the papers 
were received, it shall proceed as provided in Rule 20.2. 
20.4   Negative Determination under Article 11 (1)  
If the receiving Office does not receive, within the ap plicable time limit  under Rule 20.7, a correction or 
confirmation referred to in Rule 20.3  (a), or if a correction or confirmati on has been received but the application 
still does not fulfill the re quirements of Article 11  (1), the receiving Office shall: 
 (i) promptly notify the applicant that the application is not and will not be treated as an international 
application and shall indicate the reasons therefor; 
 (ii) notify the International Bureau  that the number it has marked on the papers will not be used as an 
international application number; 
 (iii) keep the papers constituting the purported international application and any correspondence 
relating thereto as provided in Rule 93.1; and 
 (iv) send a copy of the said papers to the Inter national Bureau where, pursuant to a request by the 
applicant under Article 25  (1), the International Bureau needs such a copy and specially asks for it. 
20.5   Missing Parts  
 (a) Where, in determining whether t he papers purporting to be an international application fulfill the 
requirements of Article 11  (1), the receiving Office finds th at a part of the description, claims or drawings is or 
appears to be missing, including the case where all of the drawings are or appear to be missing but not including 
the case where an entire element referred to in Article 11  (1) (iii) (d) or (e) is or appears to be missing, it shall 
promptly invite the applican t, at the applicant’s option: 
 (i) to complete the purported international application by furnishing the missing part; or 
 (ii) to confirm, in accordance with Rule 20.6  (a), that the part was incorporated by reference under 
Rule 4.18; 
and to make observations, if any, within the applicable ti me limit under Rule 20.7. If t hat time limit expires after 
the expiration of 12 months from the f iling date of any applicatio n whose priority is clai med, the rece iving Office 
shall call that circumstance to the attention of the applicant. 
 (b) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving 
Office, on or before the date on which a ll of the requiremen ts of Article 11  (1) are fulfilled but within the applicable 
time limit under Rule 20.7, a missing part referred to in paragraph (a) so  as to complete the international 
application, that part shall be  included in the applic ation and the receiving Office sha ll accord as the international 
filing date the date on which all of  the requirements of Article 11  (1) are fulfilled and proceed as provided in 
Rule 20.2  (b) and (c). 
 (c) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving 
Office, after the date on which all of the requirements of Article 11  (1) were fulfilled but within the applicable time 
limit under Rule 20.7, a missing part referred to in paragr aph (a) so as to complete the international application, 
that part shall be includ ed in the applicati on, and the receiving Office shall corre ct the internati onal filing date to 
the date on which the receiving Office  received that part, notify the a pplicant accordingl y and proceed as 
provided for in the Administrative Instructions. 
 (d) Where, following an invitation under paragraph (a) or otherwise, a part referred to in paragraph (a) is, 
under Rule 20.6  (b), considered to have been contained in the pur ported international application on the date on 
which one or more elements referred to in Article 11  (1) (iii) were first received by the receiving Office, the 
receiving Office shall accord as the international filing date the date on which all of the requirements of 
Article 11  (1) are fulfilled and proceed as provided in Rule 20.2  (b) and (c). 
 (e) Where the international filing dat e has been corrected under paragrap h (c), the applicant may, in a 
notice submitted to the receiv ing Office within one month from the date of  the notification un der paragraph (c),  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 23 
  
  request that the missing part concerned be disregarded, in  which case the missing part shall be considered not to 
have been furnished and the correction of the international  filing date under that par agraph shall be considered 
not to have been made, and the receiving Office shall proceed as pr ovided for in the Admini strative Instructions. 
20.6   Confirmation of Incorporation by Reference of Elements and Parts  
 (a) The applicant may submit to the receiving Office, within the app licable time limit under Rule 20.7, a 
written notice confirming that an element or part is incor porated by reference in the international application under 
Rule 4.18, accompanied by: 
 (i) a sheet or sheets embodying the entire elem ent as contained in the earlier application or 
embodying the part concerned; 
 (ii) where the applicant has not already complied with Rule 17.1  (a),  (b) or (bbis) in relation to the 
priority document, a copy of the earlier application as filed; 
 (iii) where the earlier application is not in the langua ge in which the internationa l application is filed, a 
translation of the earlier application into that la nguage or, where a translation of the international 
application is required under Rule 12.3  (a) or 12.4  (a), a translation of the earlier application into 
both the language in which the international applicati on is filed and the language of that translation; 
and 
 (iv) in the case of a part of the description, claims  or drawings, an indication as to where that part is 
contained in the earlier application and, where applic able, in any translation referred to in item (iii). 
 (b) Where the receiving Office finds that the requirements  of Rule 4.18 and paragraph (a) have been 
complied with and that the element or part referred to in paragraph (a) is completely contained in the earlier 
application concerned, that element or part shall be considered to have been contained in the purported 
international application on the date on which one or more elements referred to in Article 11  (1) (iii) were first 
received by the receiving Office. 
 (c) Where the receiving Office finds that a requirement under  Rule 4.18 or  paragraph (a) has not been 
complied with or that the element or part referred to in  paragraph (a) is not completely contained in the earlier 
application concerned, the rece iving Office shall pr oceed as provided for in Rule 20.3  (b) (i), 20.5  (b) or 20.5  (c), 
as the case may be. 
20.7   Time Limit  
 (a) The applicable time limit referred to in Rules 20.3  (a) and (b), 20.4, 20.5  (a), (b) and (c), and 20.6  (a) 
shall be: 
 (i) where an invitation under Rule 20.3  (a) or 20.5  (a), as applicable, was sent to the applicant, two 
months from the date of the invitation; 
 (ii) where no such invitation was sent to the applicant, two months from the date on which one or more 
elements referred to in Article 11  (1) (iii) were first received by the receiving Office. 
 (b) Where a correction under Article 11  (2) or a notice under Rule 20.6  (a) confirming the incorporation by 
reference of an element referred to in Article 11  (1) (iii) (d) or (e) is received by the receiving Offi ce after the 
expiration of the app licable time limit under paragra ph (a) but before that Office sends a notification to the 
applicant under Rule 20.4  (i), that correction or notice shall be consider ed to have been received within that time 
limit. 
20.8   Incompatibility with National Laws  
 (a) If, on October 5, 2005, any of Rules 20.3  (a) (ii) and (b)  (ii), 20.5  (a) (ii) and (d), and 20.6 are not 
compatible with the national law ap plied by the receiving Office, the Ru les concerned shal l not apply to an 
international applicat ion filed with that receiving Office  for as long as they continue not  to be compatible with that 
law, provided that the said Office in forms the International Bureau accordi ngly by April 5, 2006. The information 
received shall be promptly published by the International Bureau in the Gazette. 
 (abis) Where a missing element or part cannot be incorporat ed by reference in the international application 
under Rules 4.18 and 20.6 becau se of the operation of par agraph (a) of this Rule, the receiving Office shall 
proceed as provided for in Rule 20.3 (b) (i), 20.5 (b) or  20.5 (c), as the case may be. Where the receiving Office 
proceeds as provided for in Rule 20.5 (c), the applic ant may proceed as provided for in Rule 20.5 (e). 
 (b) If, on October 5, 2005, any of Rules 20.3  (a) (ii) and (b)  (ii), 20.5  (a) (ii) and (d), and 20.6 are not 
compatible with the national law applied by the designat ed Office, the Rules concerned shall not apply in respect 
of that Office in relati on to an international application in respect of which the acts referred to in Article 22 have 
been performed before that Office for as long as they continue not to be compat ible with that law, provided that 
the said Office informs the In ternational Bureau accordingly by April 5, 2006. The info rmation received shall be 
promptly published by the International Bureau in the Gazette. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 24 
  
   (c) Where an element or part is considered to have be en incorporated by reference in the international 
application by virtue of a finding of the receivi ng Office under Rule 20.6  (b), but that incorporation by reference 
does not apply to the international application for the purpos es of the procedure bef ore a designated Office 
because of the operation of paragraph (b ) of this Rule, the designated Office ma y treat the application as if the 
international filing date had been accorded under Rule 20.3  (b) (i) or 20.5  (b), or corrected under Rule 20.5  (c), as 
the case may be, provided that Rule 82ter.1 (c) and  (d) shall apply mutatis mutandis . 
[40] Schedule 2A, after Rule 21.1 
insert 
21.2   Certified Copy for the Applicant 
      Against payment of a fee, the receiving Office shall furnish to the applicant, on re quest, certified copies of the 
international application as filed and of any corrections thereto. 
[41] Schedule 2A, Rules 22.1 (b) and 22.1 (c) 
substitute 
 (b) If the International Bureau has received a copy of the notificat ion under Rule 20.2  (c) but is not, by the 
expiration of 13 months from the priori ty date, in possession of the record copy, it shall remind the receiving 
Office that it should transmit the record co py to the Internati onal Bureau promptly. 
 (c) If the International Bureau has received a copy of the notificat ion under Rule 20.2  (c) but is not, by the 
expiration of 14 months from the priori ty date, in possession of the record copy, it shall notify the applicant and 
the receiving Office accordingly. 
[42] Schedule 2A, Rules 26.1 and 26.2 
substitute 
26.1   Invitation under Article 14 (1) (b) to Correct  
The receiving Office shall issue the invitati on to correct provided for in Article 14  (1) (b) as soon as possible, 
preferably within one month from the receipt of the inter national applic ation. In the invitati on, the receiving Office 
shall invite the applicant to furnish the required corre ction, and give the applicant the opportunity to make 
observations, within the time limit under Rule 26.2. 
26.2   Time Limit for Correction  
The time limit referred to in Rule 26.1 shall be two mont hs from the date of the invitation to correct. It may be 
extended by the receiving Office at an y time before a decision is taken. 
[43] Schedule 2A, Rule 26.3ter(a) 
omit 
26.1 (a) 
insert 
26.1 
[44] Schedule 2A, Rule 26.3ter (c) 
omit 
26.1 (a)  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 25 
  
  insert 
     26.1 
[45] Schedule 2A, Rul es 26.4, 26.5 and 26.6 
substitute 
26.4   Procedure 
A correction of the requ est offered to the receiving Office may be stat ed in a letter address ed to that Office if 
the correction is of such a nature that it can be transferr ed from the letter to the request without adversely 
affecting the clarity and the direct reproducibility of th e sheet on to which the correction is to be transferred; 
otherwise, and in the case of a correction of any element of the international application other than the request, 
the applicant shall be required to submit a replacem ent sheet embodying the correction and the letter 
accompanying the replacement sheet sh all draw attention to the differences between the replaced sheet and the 
replacement sheet. 
26.5   Decision of the Receiving Office  
The receiving Office shall decide whethe r the applicant has submitted the co rrection within the applicable time 
limit under Rule 26.2, and, if the correction has been submitted within that time limit, whether the international 
application so corrected is or is not to be considered wit hdrawn, provided that no international application shall be 
considered withdrawn for lack of compliance with the physi cal requirements referred to in Rule 11 if it complies 
with those requirements to the extent necessary for the pu rpose of reasonably uniform international publication. 
[46] Schedule 2A, Rule 26bis.1 (a) 
substitute 
 (a) The applicant may correct a priority claim or add a pr iority claim to the request by a notice submitted to 
the receiving Office or the International Bureau within a ti me limit of 16 months from the priority date or, where 
the correction or addition would cause a change in the prio rity date, 16 months from the priority date as so 
changed, whichever 16-month period expires first, pr ovided that such a notice may be submitted until the 
expiration of four months from the international filing date. The correction of a priority claim may include the 
addition of any indication referred to in Rule 4.10. 
[47] Schedule 2A, Rules 26bis.2 and 26bis.3 
substitute 
26bis.2   Defects in Priority Claims  
 (a) Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds in 
relation to a priority claim: 
 (i) that the international application has an inte rnational filing date which is later than the date on 
which the priority period expired and that a request for restoration of the right of priority under 
Rule 26bis.3 has not been submitted; 
 (ii) that the priority claim does not comply with the requirements of Rule 4.10; or 
 (iii) that any indication in the priority claim is inconsistent with the corresponding indication appearing 
in the priority document; 
the receiving Office or the Internationa l Bureau, as the case may be, shall invite the applicant  to correct the 
priority claim. In the case referred to in item (i), where the international filing date is within two months from the 
date on which the priority period expired, the receiving Offi ce or the International Bu reau, as the case may be, 
shall also notify the applicant of the possibility of submitting  a request for the restoration of the right of priority in 
accordance with Rule 26bis.3, unless the receiving Office has notified the In ternational Bureau under 
Rule 26bis.3 (j) of the incompatibility of Rule 26bis.3 (a) to (i) with the national law applied by that Office. 
 (b) If the applicant does not, before the expiration of the time limit under Rule 26bis.1 (a), submit a notice 
correcting the priority claim, that prio rity claim shall, subject to paragraph (c), for the purposes  of the procedure 
under the Treaty, be cons idered not to have been ma de (“considered void”) and th e receiving Office or the IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 26 
  
  International Bureau, as the case may be, shall so decla re and shall inform the applicant accordingly. Any notice 
correcting the priority claim which is received before the receiving Office or the International Bu reau, as the case 
may be, so declares and not later than one month after the expiration of that time limit shall be considered to 
have been received before the expiration of that time limit. 
 (c) A priority claim shall not be considered void only because: 
 (i) the indication of the number of the ear lier application referred to in Rule 4.10  (a) (ii) is missing; 
 (ii) an indication in the priority claim is inconsis tent with the corresponding indication appearing in the 
priority document; or 
 (iii) the international application has an international filing date which is later than the date on which the 
priority period expired, provided that the internatio nal filing date is within the period of two months 
from that date. 
 (d) Where the receiving Office or t he International Bureau has made a declaration under paragraph (b) or 
where the priority claim has not been considered void only because paragraph (c) applies, the International 
Bureau shall publish, together with the international application, information concerning the priority claim as 
prescribed by the Administrative Instructions, as well as any information submitted by the applicant concerning 
such priority claim which is received by the Inter national Bureau prior to the completion of the technical 
preparations for international publicat ion. Such information shall be included in the communication under Article 
20 where the international application is  not published by virtue of Article 64  (3). 
 (e) Where the applicant wishes to correct or add a priority claim but the time limit under Rule 26bis.1 has 
expired, the applicant may, prior to the expiration of 30 mo nths from the priority date and subject to the payment 
of a special fee whose amount shall be fixed in the Admi nistrative Instructions, request the International Bureau 
to publish information concerning the matter, and the In ternational Bureau shall promptly publish such 
information. 
26bis.3   Restoration of Right of  Priority by Receiving Office 
        (a) Where the international application has an in ternational filing date which is later than the date on which 
the priority period expired but within the period of two mo nths from that date, the receiving Office shall, on the 
request of the applicant, and subject to paragraphs (b) to (g ) of this Rule, restore the ri ght of priority if the Office 
finds that a criterion applied by it (“c riterion for restoration”) is satisfied, namely, that  the failure to file the 
international application within the priority period: 
 (i) occurred in spite of due care required by the circumstances having been taken; or  (ii) was unintentional. 
Each receiving Office shall appl y at least one of those criter ia and may apply both of them. 
 (b) A request under paragraph (a) shall: 
 (i) be filed with the receiving Office within the time limit applicabl e under paragr aph (e); 
 (ii) state the reasons for the failu re to file the international applic ation within the priority period; and 
 (iii) preferably be accompanied by any declarati on or other evidence required under paragraph (f). 
 (c) Where a priority claim in respect of the earlier application is not contained in the international 
application, the applicant shall submit, within the ti me limit applicable under paragraph (e), a notice under 
Rule 26
bis.1 (a) adding the priority claim. 
 (d) The submission of a request under paragraph (a) ma y be subjected by the receiving Office to the 
payment to it, for its own benefit, of a fee for requesting restoration, payable within the time limit applicable under 
paragraph (e). The amount of t hat fee, if any, shall be fixed by the receiving Office. 
 (e) The time limit referred to in paragraphs (b)  (i), (c) and (d) shall be two months from the date on which 
the priority period expired, provided that, where the applicant makes a request for early publication under 
Article 21  (2) (b), any request under paragraph (a) or any notice referred to in paragraph (c) submitted, or any fee 
referred to in paragraph (d) paid, after the technica l preparations for international publication have been 
completed shall be considered as not having been submitted or paid in time. 
 (f) The receiving Office may require t hat a declaration or ot her evidence in support of the statement of 
reasons referred to in paragraph (b)  (iii) be filed with it within a time limit which shall be reasonable under the 
circumstances. The applicant may furnish to the Internati onal Bureau a copy of any such declaration or other 
evidence filed with the receivi ng Office, in which case the International Bur eau shall include such copy in its files. 
 (g) The receiving Office shall not refuse, totally or in part, a request under paragr aph (a) without giving the 
applicant the opportunity to make observations on the intended refusal within a time limit which shall be 
reasonable under t he circumstances. Such notice of intended refusal by the receiv ing Office may be sent to the 
applicant together with any invitation to file a dec laration or other evidence under paragraph (f).  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 27 
  
   (h) The receiving Office shall promptly: 
 (i) notify the International Bureau of t he receipt of a request under paragraph (a); 
 (ii) make a decision upon the request; 
 (iii) notify the applicant and the International Bureau of its deci sion and the criterion for restoration 
upon which the decision was based. 
 (i) Each receiving Office sha ll inform the International Bureau of whic h of the criteria for restoration it 
applies and of any subsequent changes in  that respect. The International Bureau shall promptly publish such 
information in the Gazette. 
 (j) If, on October 5, 2005, paragraphs (a) to (i) are not compatible wi th the national la w applied by the 
receiving Office, those paragraphs  shall not apply in respect of that Office for as long as they continue not to be 
compatible with that law, provi ded that the said Office informs t he International Bureau accordingly 
by April 5, 2006. The information received shall be prompt ly published by the Internatio nal Bureau in the Gazette. 
[48] Schedule 2A, Rule 34.1 (c) (ii) 
substitute 
 (ii) the patents issued by the Federal Republic of Germany, the Republic of Korea and the Russian 
Federation, 
[49] Schedule 2A, Rule 34.1 (e) 
substitute 
 (e) Any International Searching Authority whose official language, or one of whose official languages, is not 
Japanese, Korean, Russian or Spanish is entitled not to  include in its documentati on those patent documents of 
Japan, the Republic of Ko rea, the Russian Federation and the former Soviet Union as well as those patent 
documents in the Spanish language, respectively, for wh ich no abstracts in the English language are generally 
available. English abstracts becoming generally available after the date of entry into force of these Regulations 
shall require the inclusion of the patent documents to whic h the abstracts refer no later than six months after such 
abstracts become generally available. In case of the inte rruption of abstracting services in English in technical 
fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures 
to provide for the prompt restoration of  such services in  the said fields. 
[50] Schedule 2A, Rule 36.1 (iv) 
substitute 
 (iv) that Office or organization must have in place a qua lity management system and internal review 
arrangements in accordance with the common rules of international search; 
 (v) that Office or organization must hold an appointment  as an International Preliminary Examining 
Authority. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 28 
  
  [51] Schedule 2A, Rule 38.2 
substitute 
38.2   Establishment of Abstract 
       If the international application does not contai n an abstract and the International  Searching Authority has not 
received a notification from the receiving Office to the e ffect that the applicant has been invited to furnish an 
abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an 
abstract. Such abstract shall be established in the langu age in which the international application is to be 
published or, if a translation into another language was transmitted under Rule 23.1 (b) and the International 
Searching Authority so wishes, in the language of that translation. 
38.3   Modification of Abstract 
The applicant may, until the expiration of one month fr om the date of mailing of the international search 
report, submit to the Internat ional Searching Authority: 
 (i) proposed modifications of the abstract; or 
 (ii) where the abstract has been established by the Authority, proposed modifications of, or comments 
on, that abstract, or both m odifications and comments; 
and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the 
abstract, it shall notify the modification to the International Bureau. 
[52] Schedule 2A, Rule 43.4 
substitute 
43.4   Language 
Every international search report and any declaration made under Article 17 (2) (a) shall be in the language in 
which the international application to which it  relates is to be published, provided that: 
 (i) if a translation of the international applic ation into another language was transmitted under 
Rule 23.1 (b) and the International Searching Authority so wishes, the international search report 
and any declaration made under Article 17 (2) (a) may be in the language of that translation; 
 (ii) if the international applicat ion is to be published in the language of a translation furnished under 
Rule 12.4 which is not accepted by the Internati onal Searching Authority and that Authority so 
wishes, the international search report and any declaration made under Article 17 (2) (a) may be in 
a language which is both a language accepted by that Authority and a language of publication 
referred to in Ru le 48.3 (a). 
[53] Schedule 2A, after Rule 43.6 
insert 
43.6bis   Consideration of Rectificat ions of Obvious Mistakes  
 (a) A rectification of an obvious mist ake that is authorized under Rule 91. 1 shall, subject to paragraph (b), 
be taken into account by the International Searching Aut hority for the purposes of th e international search and 
the international search report shall so indicate. 
 (b) A rectification of an obvious mi stake need not be taken into account  by the International Searching 
Authority for the purposes of the intern ational search if it is authorized by  or notified to that Authority, as 
applicable, after it has begun to draw up the international se arch report, in which case the report shall, if possible, 
so indicate, failing which the International Searching Au thority shall notify the International Bureau accordingly 
and the International Bureau shall proceed as prov ided for in the Administrative Instructions.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 29 
  
  [54] Schedule 2A, Rule 43bis.1 (b) 
substitute 
 (b) For the purposes of establishing the written opinion, Articles 33  (2) to (6) and 35  (2) and (3) and Rules 
43.4, 43.6bis, 64, 65, 66.1  (e), 66.7, 67, 70.2  (b) and (d), 70.3, 70.4  (ii), 70.5  (a), 70.6 to 70.10, 70.12, 70.14 
and 70.15  (a) shall apply mutatis mutandis . 
[55] Schedule 2A, Rule 48.2 
substitute 
48.2   Contents  
 (a) The publication of the internati onal application shall contain: 
 (i) a standardized front page;  (ii) the description; 
 (iii) the claims; 
 (iv) the drawings, if any; 
 (v) subject to paragraph (g), the international search  report or the declaration under Article 17 (2) (a); 
 (vi) any statement filed under Article 19 (1), unl ess the International Bureau finds that the statement 
does not comply with the provisions of Rule 46.4; 
 (vii) where the request for publication under Rule 91.3  (d) was received by the International Bureau 
before the completion of the technical preparations  for international publication, any request for 
rectification of an obvious mist ake, any reasons and any comments referred to in Rule 91.3  (d); 
 (viii) the indications in relation to deposited biological material furnished under Rule 13
bis separately 
from the description, together with an indication of the date on which the International Bureau 
received such indications; 
 (ix) any information concerning a priority claim referred to in Rule 26bis.2 (d); 
 (x) any declaration referred to in Rule 4.17, and any correction thereof under Rule 26ter.1, which was 
received by the International Bureau before t he expiration of the time limit under Rule 26ter.1; 
 (xi) any information concerning a request under Rule 26bis.3 for restoration of the right of priority and 
the decision of the receiving Office upon such req uest, including information as to the criterion for 
restoration upon which the decision was based. 
 (b) Subject to paragraph (c), the front page shall include: 
 (i) data taken from the request sheet and such ot her data as are prescribed by the Administrative 
Instructions; 
 (ii) a figure or figures where the international  application contains drawings, unless Rule 8.2  (b) 
applies; 
 (iii) the abstract; if the abstract is  both in English and in another langua ge, the English text shall appear 
first; 
 (iv) where applicable, an indication that the request contains a declaration referred to in Rule 4.17 
which was received by the International Bureau  before the expiration of the time limit under 
Rule 26ter.1; 
 (v) where the international  filing date has been accorded by  the receiving Office under 
Rule 20.3  (b) (ii) or 20.5  (d) on the basis of the incorporation by reference under Rules 4.18 
and 20.6 of an element or part, an indication to that  effect, together with an indication as to whether 
the applicant, for the purposes of Rule 20.6  (a) (ii), relied on compliance with Rule 17.1  (a), (b) 
or (bbis) in relation to the priority document or on a separately submitted copy of the earlier 
application concerned; 
 (vi) where applicable, an indication that the published international application contains information 
under Rule 26bis.2 (d); 
 (vii) where applicable, an indication that the published international application contains information 
concerning a request under Rule 26bis.3 for restoration of the right of priority and the decision of the 
receiving Office upon such request; IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 30 
  
   (viii) where applicable, an indication that the applicant has, under Rule 26bis.3 (f), furnished copies of 
any declaration or other evidence to the International Bureau. 
 (c) Where a declaration under Article 17 (2) (i) has issued, the front page shall conspicuously refer to that 
fact and need include neither a drawing nor an abstract. 
 (d) The figure or figures referred to in paragraph (b) (ii) shall be selected as provided in Rule 8.2. 
Reproduction of such figure or figures on the front page may be in a reduced form. 
 (e) If there is not enough room on the front page for th e totality of the abstract referred to in paragraph 
(b) (iii), the said abstract shall appear on the back of the front page. The same shall apply to the translation of the 
abstract when such translation is required to be published under Rule 48.3 (c). 
 (f) If the claims have been amended under Article 19, t he publication of the inter national application shall 
contain the full text of t he claims both as filed and as amended. Any statement referred to in Article 19 (1) shall 
be included as well, unless the International Bureau finds that the statement does not co mply with the provisions 
of Rule 46.4. The date of receipt of the amended clai ms by the International Bureau shall be indicated. 
 (g) If, at the time of the completion of the technica l preparations for intern ational public ation, the 
international search report is not yet available, the front page shall contain an indication to the effect that that 
report was not available and that the international search report (when it becomes available) will be separately 
published together with a revised front page. 
 (h) If, at the time of the completion of the technical preparations for intern ational public ation, the time limit 
for amending the claims under Article 19 has not expired, t he front page shall refer to that fact and indicate that, 
should the claims be amended under Arti cle 19, then, promptly after receipt by the International Bureau of such 
amendments within the time limit under Rule 46.1, the full text of the claims as amended will be published 
together with a revised front page. If a statement under Article 19 (1) has been filed, that statement shall be 
published as well, unless the International Bureau finds that  the statement does not comply with the provisions of 
Rule 46.4. 
 (i) If the authorization of a rect ification of an obvious mistake in the international application referred to in 
Rule 91.1 is received by or, where applicable, given by the International Bureau after completion of the technical 
preparations for international publicati on, a statement reflecting all the rectifications s hall be published, together 
with the sheets containing the rectif ications, or the replacement sheets a nd the letter furnished under Rule 91.2, 
as the case may be, and the front page shall be republished. 
 (j) If, at the time of completion of the technical prepar ations for internat ional public ation, a request under 
Rule 26bis.3 for restoration of the right of  priority is still pending, the pub lished international application shall 
contain, in place of the decision by the receiving Offi ce upon that request, an indicati on to the effect that such 
decision was not available and that the decision, when it becomes availa ble, will be separately published. 
 (k) If a request for publication under Rule 91.3  (d) was received by the International Bureau after the 
completion of the technical preparations for international publication, the request for rectification, any reasons 
and any comments referred to in that Rule shall be prom ptly published after the receipt of such request for 
publication, and the front page shall be republished. 
[56] Schedule 2A, Rule 48.3 (c) 
substitute 
 (c) If the international application is published in a language other than English, the international search 
report to the extent that it is published under Rule 48.2 (a) (v), or the declaration referred to in Article 17 (2) (a), 
the title of the invention, the abstract and any text matter pertaining to the figure or figures accompanying the 
abstract shall be published both in that language and in English. The translations, if not furnished by the applicant 
under Rule 12.3, shall be prepared under th e responsibility of the International Bureau.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 31 
  
  [57] Schedule 2A, after Rule 49bis 
insert 
Rule 49ter  
Effect of Restoration of Right of  Priority by Receiving Office;  
Restoration of Right of Priority by Designated Office 
49ter.1   Effect of Restoration of Right of Priority by Receiving Office  
 (a) Where the receiving Office has restored  a right of priority under Rule 26bis.3 based on a finding by it that 
the failure to file the international application within t he priority period occurred in spite of due care required by 
the circumstances having been taken, t hat restoration shall, subject to paragraph (c), be effective in each 
designated State. 
 (b) Where the receiving Office has restored  a right of priority under Rule 26bis.3 based on a finding by it that 
the failure to file the international application within the priority period was unintentional, that restoration shall, 
subject to paragraph (c), be effective in any desig nated State whose applicable national law provides for 
restoration of the right of pr iority based on that criterion or on a criter ion which, from the viewpoint of applicants, 
is more favorable than that criterion.  
       (c)   A decision by the receiv ing Office to restore a right of priority under Rule 26bis.3 shall not be effective in 
a designated State where the designa ted Office, a court or any other comp etent organ of or acting for that 
designated State finds that a requirement under Rule 26bis.3 (a), (b)  (i) or (c) was not complied with, taking into 
account the reasons stated in the request submitt ed to the receiving Office under Rule 26bis.3 (a) and any 
declaration or other evidence filed with the receiving Office under Rule 26bis.3 (b) (iii). 
 (d) A designated Office shall not review the decision of  the receiving Office unless it may reasonably doubt 
that a requirement referred to in parag raph (c) was complied with, in which ca se the designated Office shall notify 
the applicant accordingly, indicating the reasons for that  doubt and giving the applicant an opportunity to make 
observations within a reasonable time limit. 
 (e) No designated State shall be bo und by a decision of the receivin g Office refusing a request under 
Rule 26bis.3 for restoration of the right of priority. 
 (f) Where the receiving Office has re fused a request for the restorati on of the right of priority, any 
designated Office may consider that request to be a request for restor ation submitted to that designated Office 
under Rule 49ter.2 (a) within the time limit under that Rule. 
 (g) If, on October 5, 2005, paragraphs (a ) to (d) are not compatible with  the national la w applied by the 
designated Office, those paragraphs shall no t apply in respect of that Office for as long as they continue not to be 
compatible with that law, provi ded that the said Office informs t he International Bureau accordingly 
by April 5, 2006. The information received shall be prompt ly published by the Internatio nal Bureau in the Gazette. 
49ter.2   Restoration of Right of Pr iority by Designated Office  
 (a) Where the international application claims the priority  of an earlier application and has an international 
filing date which is later than the date on which the priority period expi red but within the period of two months 
from that date, the designated Office sh all, on the request of t he applicant in accordance  with paragraph (b), 
restore the right of priority if the Office  finds that a criter ion applied by it (“criterion fo r restoration”) is satisfied, 
namely, that the failure to f ile the international application within the priority period: 
 (i) occurred in spite of due care required by the circumstances having been taken; or 
 (ii) was unintentional. 
Each designated Office shall apply at least one of those criteria  and may apply both of them. 
 (b) A request under paragraph (a) shall: 
 (i) be filed with the desig nated Office within a time limit of one month from the app licable time limit 
under Article 22; 
 (ii) state the reasons for the failure to file the in ternational application within the priority period and 
preferably be accompanied by any declaration or other evidence required under paragraph (c); and 
 (iii) be accompanied by any fee for requesti ng restoration required under paragraph (d). 
 (c) The designated Office may r equire that a declaration or  other evidence in supp ort of the statement of 
reasons referred to in paragraph (b)  (ii) be filed with it within a time limit which shall be reasonable under the 
circumstances. 
 (d) The submission of a request under paragraph (a) ma y be subjected by the designated Office to the 
payment to it, for its own benefit, of  a fee for requesting restoration. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 32 
  
   (e) The designated Office shall not refuse , totally or in part, a request un der paragraph (a) without giving the 
applicant the opportunity to make observations on the intended refusal within a time limit which shall be 
reasonable under the circum stances. Such notice of intended refusal ma y be sent by the designated Office to the 
applicant together with any invitation to file a dec laration or other evidence under paragraph (c). 
 (f) Where the nationa l law applicable by  the designated Office pr ovides, in respect of the restoration of the 
right of priority, for requirements which, from the viewpoint of applicants, are more favorable than the 
requirements provided for under paragraphs (a) and (b), th e designated Office may, when determining the right of 
priority, apply the requirements under the applicable national law instead of the requirements under those 
paragraphs. 
 (g) Each designated Office shall inform the International Bureau of which of the criter ia for restoration it 
applies, of the requirements, where appl icable, of the national law applicable in accordance with paragraph (f), 
and of any subsequent changes in that respect. The Intern ational Bureau shall promptly publish such information 
in the Gazette. 
 (h) If, on October 5, 2005, paragraphs (a) to (g) are not  compatible with the nat ional law applied by the 
designated Office, those paragraphs shall no t apply in respect of that Office for as long as they continue not to be 
compatible with that law, provi ded that the said Office informs t he International Bureau accordingly 
by April 5, 2006. The information received shall be prompt ly published by the Internatio nal Bureau in the Gazette. 
[58] Schedule 2A, Rules 51.1 and 51.2 
substitute 
51.1   Time Limit for Presenting the Request to Send Copies  
The time limit referred to in Article 25  (1) (c) shall be two months computed from the date of the notification 
sent to the applicant under Rule 20.4  (i), 24.2  (c) or 29.1  (ii). 
51.2   Copy of the Notification  
Where the applicant, after having received a negative determination under Article 11  (1), requests the 
International Bureau, under Article 25  (1), to send copies of the file of t he purported international application to 
any of the named Offices he has attempted to designate, he shall attach to hi s request a copy of the notification 
referred to in Rule 20.4  (i). 
[59] Schedule 2A, Rule 51bis.1 (e) 
substitute 
 (e) The national law applicable by t he designated Office may, in accordan ce with Article 27, require the 
applicant to furnish a translation of the priority documen t, provided that such a translation may only be required: 
   (i) where the validity of the priority claim is relevant to the determinati on of whether the invention 
concerned is patentable; or 
 (ii) where the inte rnational filing date has been accorded by the receiving Office under 
Rule 20.3  (b) (ii) or 20.5  (d) on the basis of the incorporation by reference under Rules 4.18 
and 20.6 of an element or part, for t he purposes of determining under Rule 82ter.1 (b) whether that 
element or part is completely contained in the priority document concerned, in which case the 
national law applicable by  the designated Office may also requir e the applicant to furnish, in the 
case of a part of the description, claims or draw ings, an indication as to where that part is 
contained in the translation of the priority document. 
[60] Schedule 2A, Rule 54bis.1 (a) 
substitute 
 (a) A demand may be made at any time prior to the expiration of whichever of the following periods expires 
later: 
 (i) three months from the date of transmittal to the applicant of the international search report or the 
declaration referred to in Article 17 (2) (a), and of the written opinion established under 
Rule 43bis.1; or  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 33 
  
   (ii) 22 months from the priority date. 
[61] Schedule 2A, after Rule 55.2 (a) 
insert 
 (abis) A translation of the international application into a language referred to in paragraph (a) shall include any 
element referred to in Article 11(1)(iii)(d) or (e) furnis hed by the applicant under Rule  20.3(b) or 20.6(a) and any 
part of the description, claims or drawings furnished by  the applicant under Rule 20.5(b) or 20.6(a) which is 
considered to have been contained in the in ternational application under Rule 20.6(b). 
 (ater) The International Preliminary Examining Author ity shall check any translation furnished under 
paragraph (a) for compliance with the physical requirement s referred to in Rule 11 to the extent that compliance 
therewith is necessary for the purposes of the international preliminary examination. 
[62] Schedule 2A, Rules 55.2 (c) and 55.2 (d) 
substitute 
 (c) If a requirement referred to in paragraphs (a), (abis) and ( ater) is not complied with and paragraph (b) 
does not apply, the International Preliminary Examining Aut hority shall invite the applicant to furnish the required 
translation or the required correction, as the case may be , within a time limit which shall be reasonable under the 
circumstances. That time limit shall not  be less than one month from the date of the invitation. It may be extended 
by the International Preliminary Examining Author ity at any time before a decision is taken. 
 (d) If the applicant complies with the invitation within t he time limit under paragraph (c), the said requirement 
shall be considered to have been complied with. If the a pplicant fails to do so, the demand shall be considered 
not to have been submitted and the International Pr eliminary Examining Authority shall so declare. 
[63] Schedule 2A, Rule 63.1 (iv) 
substitute 
 (iv) that Office or organization must have in place a qua lity management system and internal review 
arrangements in accordance with the common rule s of international preliminary examination; 
 (v) that Office or organization must hold an appoint ment as an Internationa l Searching Authority. 
[64] Schedule 2A, Rule 64.1 (b) 
substitute 
 (b) For the purposes of paragraph (a ), the relevant date shall be: 
 (i) subject to items (ii) and (iii), the internati onal filing date of the international application under 
international preliminary examination; 
 (ii) where the international application under internat ional preliminary examination claims the priority of 
an earlier application and has an international filing date  which is within the priority period, the filing 
date of such earlier application, unless the Inter national Preliminary Examining Authority considers 
that the priority claim is not valid; 
 (iii) where the international application under internat ional preliminary examination claims the priority of 
an earlier application and has an international filing date which is later than the date on which the 
priority period expired but within the period of tw o months from that date,  the filing date of such 
earlier application, unless the International Pre liminary Examining Authority considers that the 
priority claim is not valid for reasons other than t he fact that the internat ional application has an 
international filing date which is later than th e date on which the priority period expired. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 34 
  
  [65] Schedule 2A, after Rule 66.1 (d) 
insert 
 (dbis) A rectification of an obvious mist ake that is authorized under Rule 91.1 shall, subject to Rule 66.4bis, be 
taken into account by the Internatio nal Preliminary Examining Authority for the purposes  of the international 
preliminary examination. 
 [66] Schedule 2A, Rules 66.4bis and 66.5 
substitute 
66.4bis   Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes  
Amendments, arguments and rect ifications of obvious mistakes need  not be taken into account by the 
International Preliminary Examining Authority for the purpos es of a written opinion or the international preliminary 
examination report if they are received by, authorized by or  notified to that Authority, as applicable, after it has 
begun to draw up that opinion or report. 
66.5   Amendment  
Any change, other than the rectificatio n of an obvious mistake, in the claims, the description, or the drawings, 
including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be 
considered an amendment. 
[67] Schedule 2A, after Rule 70.2 (d) 
insert 
 (e) If a rectification of an obvious mist ake is taken into account under Rule  66.1, the report shall so indicate. 
If a rectification of an obvious  mistake is not taken into account pursuant to Rule 66.4bis, the report shall, if 
possible, so indicate, failing which the International Pre liminary Examining Authority s hall notify the International 
Bureau accordingly and the International Bureau shall proce ed as provided for in the Administrative Instructions. 
[68] Schedule 2A, Rule 70.16 (a) 
substitute 
 (a) Each replacement sheet under Rule 66.8  (a) or (b) and each replacement sheet containing amendments 
under Article 19 shall, unless superseded by later replacement sheets or amendments resulting in the 
cancellation of entire sheets under Rule 66.8  (b), be annexed to the report. Replacement sheets containing 
amendments under Article 19 which have been considered as reversed by an amendment under Article 34 and 
letters under Rule 66.8 shall not be annexed. 
[69] Schedule 2A, Rule 76, heading 
substitute 
Rule 76  
Translation of Priority Document;  
Application of Certain Rules to Procedures before Elected Offices 
[70] Schedule 2A, Rule 76.5 
omit 
Rules 13ter.3, 22.1( g), 47.1, 49, 49bis and 51bis shall apply, 
insert 
Rules 13ter.3, 20.8( c), 22.1( g), 47.1, 49, 49bis, 49ter and 51bis shall apply,  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 35 
  
  [71] Schedule 2A, Rule 82ter 
substitute 
Rule 82ter  
Rectification of Errors Made 
by the Receiving Office or by the International Bureau 
82ter.1   Errors Concerning the International Filing Date and the Priority Claim  
 (a) If the applicant proves to the satisf action of any designated or elected Office that the internat ional filing 
date is incorrect due to an error made by the receiving Office or that the priority  claim has been erroneously 
considered void by the receiving Office  or the International Bureau, and if the error is an error such that, had it 
been made by the designated or  elected Office itself, that Office would rectify it under the national law or national 
practice, the said Office shal l rectify the error an d shall treat the international ap plication as if  it had been 
accorded the rectified international filing date or as if the priority claim had not been considered void. 
 (b) Where the internat ional filing date has been accorded by  the receiving Office under Rule 20.3  (b) (ii) 
or 20.5  (d) on the basis of the incorporation by reference under  Rules 4.18 and 20.6 of an  element or part but the 
designated or elected Office finds that: 
 (i) the applicant has not complied with Rule 17.1  (a), (b) or (bbis) in relation to the priority document; 
 (ii) a requirement under Rule 4.18, 20.6  (a) (i) or 51bis.1 (e) (ii) has not been complied with; or 
 (iii) the element or part is not completely c ontained in the priority document concerned; 
the designated or elected Office may, subject to paragra ph (c), treat the internatio nal application as if the 
international filing date had been accorded under Rule 20.3  (b) (i) or 20.5  (b), or corrected under Rule 20.5  (c), as 
applicable, provided that Rule 17.1  (c) shall apply mutatis mutandis . 
 (c) The designated or elected Office shall not treat the international application under paragraph (b) as if the 
international filing date had been accorded under Rule 20.3  (b) (i) or 20.5  (b), or corrected under Rule 20.5  (c), 
without giving the applicant the opportunity to make observations on the intended treatment, or to make a request 
under paragraph (d), within a time limit whic h shall be reasonable under the circumstances. 
 (d) Where the designated or elected Office, in accordance  with paragraph (c), has notified the applicant that 
it intends to treat the international application as if the international filing date had been corrected under 
Rule 20.5  (c), the applicant may, in  a notice submitted to that Office wi thin the time limit referred to in 
paragraph (c), request that the missing part concerned be  disregarded for the purposes of national processing 
before that Office, in which case that  part shall be considered not to have been furnished and that Office shall not 
treat the international application as if t he international filing date had been corrected. 
[72] Schedule 2A, Rule 91 
substitute 
Rule 91  
Rectification of Obvious Mistakes 
in the International Appli cation and Other Documents 
91.1   Rectification of Obvious Mistakes  
 (a) An obvious mistake in the inter national application or another docum ent submitted by the applicant may 
be rectified in accordance with this  Rule if the applicant so requests. 
 (b) The rectification of a mist ake shall be subject to authorization by the “competent authority”, that is to say: 
 (i) in the case of a mistake in the request part of the international application or in a correction 
thereof—by the re ceiving Office; 
 (ii) in the case of a mistake in the description, claims or drawings or in a correction thereof, unless the 
International Preliminary Examining Authority is competent under item (iii)—by the International 
Searching Authority; 
 (iii) in the case of a mistake in the description, clai ms or drawings or in a correction thereof, or in an 
amendment under Article 19 or 34, where a deman d for international preliminary examination has 
been made and has not been withdrawn and the date on which international preliminary 
examination shall start in accordance with Rule 69.1 has passed—by the International Preliminary 
Examining Authority; IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 36 
  
   (iv) in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving 
Office, the International S earching Author ity, the Internatio nal Preliminar y Examining Au thority or 
the International Bureau, other than a mistak e in the abstract or in an amendment under 
Article 19—by that Office, Authority or Bureau, as the case may be. 
 (c) The competent authority shal l authorize the rectific ation under this Rule of a mistake if, and only if, it is 
obvious to the competent authority t hat, as at the applicable date under paragraph (f), something else was 
intended than what appears in the document concerned an d that nothing else could have been intended than the 
proposed rectification. 
 (d) In the case of a mistake in the description, claims or drawings or in a corr ection or amendment thereof, 
the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the 
description, claims and drawings and, where applic able, the correction or amendment concerned. 
 (e) In the case of a mistake in the request part of the in ternational application or a correction thereof, or in a 
document referred to in paragraph (b)  (iv), the competent author ity shall, for the purpose s of paragraph (c), only 
take into account the contents of the international applicat ion itself and, where applicable, the correction 
concerned, or the document referred to in paragraph (b)  (iv), together with any other document submitted with the 
request, correction or document, as the case may be, any priority document in respect of the international 
application that is available to the authority in accord ance with the Administrative Instructions, and any other 
document contained in the authority’s international applic ation file at the applicable  date under paragraph (f). 
 (f) The applicable date for the purposes of paragraphs (c) and (e) shall be: 
 (i) in the case of a mistake in a part of the inter national application as fil ed—the international filing 
date; 
 (ii) in the case of a mistake in a document other t han the international application as filed, including a 
mistake in a correction or an amendment of the international application—the date on which the 
document was submitted. 
 (g) A mistake shall not be rectifiable under this Rule if: 
 (i) the mistake lies in the omissi on of one or more entire element s of the international application 
referred to in Article 3  (2) or one or more entire sheets of the international application; 
 (ii) the mistake is in the abstract;  (iii) the mistake is in an amendm ent under Article 19, unless the In ternational Preliminary Examining 
Authority is competent to aut horize the rectification of su ch mistake under paragraph (b)  (iii); or 
 (iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under 
Rule 26
bis.1 (a), where the rectification of  the mistake would cause a ch ange in the priority date; 
provided that this paragraph shall not affe ct the operation of Rules 20.4, 20.5, 26bis and 38.3. 
 (h) Where the receiving Office, the In ternational Searching Authority, the Intern ational Preliminary 
Examining Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the 
international application or another document, it may invite  the applicant to request rectification under this Rule. 
91.2   Requests for Rectification  
A request for rectification under Rule 91.1 shall be su bmitted to the competent authority within 26 months 
from the priority date. It shall specify the mistake to be rectified and the proposed rect ification, and may, at the 
option of the applicant, contain a brief explanation. Rule 26.4 shall apply mutatis mutandis  as to the manner in 
which the proposed rectificat ion shall be indicated. 
91.3   Authorization and Effe ct of Rectifications  
 (a) The competent authority shall prompt ly decide whether to authorize or re fuse to authorize a rectification 
under Rule 91.1 and shall promptly notify the applicant a nd the International Bureau of the authorization or 
refusal and, in the case of refusal, of the reasons therefor. T he International Bureau shall proceed as provided for 
in the Administrative In structions, including, as requ ired, notifying the receiving Offi ce, the International Searching 
Authority, the Internationa l Preliminary Examining Au thority and the designated and elected Offices of the 
authorization or refusal. 
 (b) Where the rectification of an obvious mistake has been authoriz ed under Rule 91.1, the document 
concerned shall be rectified in accordance with the Administrative Instructions. 
 (c) Where the rectification of an obvious mistak e has been authorized, it shall be effective: 
 (i) in the case of a mistake in the international app lication as filed, from the international filing date; 
 (ii) in the case of a mistake in a document other t han the international application as filed, including a 
mistake in a correction or an amendment of the inte rnational application, from the date on which 
that document was submitted.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 37 
  
   (d) Where the competent authority refuses to authorize a rectification under Rule  91.1, the International 
Bureau shall, upon request submitted to it by the applic ant within two months from the date of the refusal, and 
subject to the payment of a special fe e whose amount shall be fixed in the Ad ministrative Instructions, publish the 
request for rectification, the reasons for refusal by the authority and any further brief comments that may be 
submitted by the applicant, if possible together with the in ternational application. A co py of the request, reasons 
and comments (if any) shall if possible be included in the communication under Article 20 where the international 
application is not published by virtue of Article 64  (3). 
 (e) The rectification of an obvious mistake ne ed not be taken into account by any designated Office in which 
the processing or examinatio n of the international application has alre ady started prior to the date on which that 
Office is notified under Rule 91.3  (a) of the authorization of the rectification by the competent authority. 
 (f) A designated Office may disregard a re ctification that was aut horized under Rule 91.1 only if it finds that 
it would not have authorized the rectif ication under Rule 91.1 if it had been the competent authorit y, provided that 
no designated Office shall disr egard any rectification that  was authorized under Rule  91.1 without giving the 
applicant the opportunity to make observations, within a time limit which shall be reasonable under the 
circumstances, on the Office’s intentio n to disregard the rectification. 
[73] Schedule 7, Part 3, after item 307 
insert 
308 For processing a request for restoration of priority under 
Rule 26bis of the PCT. $200 
[74] Schedule 7, Part 4, items 403 and 404 
substitute 
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 
404 The international filing fee (where applicable, as reduced under 
item 403) and the handling fee are reduced by 75% if the international application is filed by:  
  (a) an applicant who is a natu ral 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  
  (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.  
 If there are several applicants, each must satisfy the criteria 
mentioned in paragraph (a) or (b).  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 38 
  
  Schedule 5 Amendment of Plant Breeder’s Rights 
Regulations 1994  commencing 
on 27 March 2007 
(regulation 6) 
[1] After regulation 3A 
insert 
3B Employees to whom Registra r may delegate (Act s59 (3)) 
  For subsection 59 (3) of the Act, the Re gistrar may delegate all or any of the 
Registrar’s powers or functi ons under the Act or these Regulations, to an employee 
of the PBR office: 
 (a) holding, or performing the duties of, the position of Examiner of Plant 
Breeder’s Rights; or 
 (b) employed at any of the following levels:  (i) Executive level 1 or 2; 
 (ii) APS level 2, 3, 4, 5 or 6. 
3C Employees to whom Minister’s  powers may be subdelegated 
(Act s59 (4)) 
  For subsection 59 (4) of the Act, the cl ass of employee to whom the Minister’s 
powers or functions may be delegated is an employee employed at Executive 
level 2. 
3D Employees to whom Secretar y’s powers may be subdelegated 
(Act s59 (4)) 
  For subsection 59 (4) of the Act, the cl ass of employee to wh om the Secretary’s 
powers or functions may be delegated is an employee: 
 (a) holding, or performing the duties of, the position of Examiner of Plant 
Breeder’s Rights; or 
 (b) employed at any of the following levels: 
 (i) Executive level 1 or 2; 
 (ii) APS level 2, 3, 4, 5 or 6. 
3E Period for doing certain act s — office not open for business 
  For subsection 76A (1) of the Act, the circumstance is that the act is done at: 
 (a) the PBR office; or  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 39 
  
     (b) the PBR sub-office; 
that was not open for business. 
Note   Subsection 76A (1) provides as follows: 
‘(1) If the last day of a period provided by this Act (except this section) or the regulations for 
doing an act is a day when the PBR office or a PBR sub-office is not open for business, the act may be done in prescribed circumstances on the next day when the office or sub-office is open for 
business.’. 
3F Days when office not open for business 
 (1) For paragraph 76A (2) (a) of the Act,  the days on which the PBR office or PBR 
sub-office is not open for business are: 
 (a) Saturday; and 
 (b) Sunday; and 
 (c) Australia Day; and  (d) Anzac Day. 
 (2) For paragraph 76A (2) (b) of the Act, the Director General of IP Australia is a 
prescribed person. 
  (3) For paragraph 76A (2) (b) of the Act, the prescribed way of publishing a 
declaration is in the Plant Varieties Journal. 
3G Period for doing certain acts — acts to which section 76A does not 
apply   
    For subsection 76A (7) of the Act, an act done in relation to proceedings in a court 
or a tribunal is prescribed.   IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 40 
  
  Schedule 6 Amendments of Trade Marks Regulations 
1995  commencing on 27 March 2007 
(regulations 7 and 9) 
[1] After regulation 8.1 
insert 
8.1A Notice of revocation 
  For subsection 84A (4) of the Act,  a notice by the Registrar must be: 
 (a) in writing; and 
 (b) sent, as the case requires, to the ad dress for service of each of the following: 
 (i) the registered owner;  (ii) the person recorded under Part 11 of the Act. 
[2] Regulation 16.2 
substitute 
16.2 Documents to be sent to Commission 
 (1) If, after examining an applica tion, the Registrar is satisfied that: 
 (a)  the application has been made  in accordance with this Act; and 
 (b) there are no grounds for rejecting it; 
the Registrar must send to the Commission copies of the documents mentioned in 
subregulation (2). 
        (2)   For subregulation (1), the documents are:     (a) the application for registration; and 
               (b) a notification of any am endment made to the application for registration of a 
certification trade mark; and 
    (c) a copy of the rules governing th e use of the certifica tion trade mark; and 
     (d) any other document that is relevant to the application.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 41 
  
  [3] Regulation 16.10 
substitute 
16.10 Decision on variation of rules 
 (1) The Commission may approve a varia tion of the rules if the Commission is 
satisfied that the rules, as varied:  
 (a) would not be to the detriment of the public; and 
 (b) are satisfactory having regard to the criteria prescribed in regulation 16.6; and 
 (c) provide that the attributes a person mu st have to become an approved certifier 
are sufficient to enable the person to assess competently whether goods or 
services meet the cert ification requirements. 
 (2) If the Commission approves a varia tion of the rules, the Commission must: 
 (a) notify the registered owner, in writing, of its decision to approve a variation of 
the rules; and 
 (b) certify in writing that it is satisfied of the matters mentioned in 
subsection 178 (3) of the Act and in subregulation (1); and  
 (c) send a copy of the certifi cate to the Registrar; and 
 (d) send a certified copy of the rule s as varied to the Registrar. 
       (3)     If the Commission decides not to approve a variation of the rules, the Commission 
must notify the Registrar and the registered owner, in writing, of its decision not to 
approve a variation of the rules. 
 (4) The Registrar must publish in the Official Journal  notice of the Commission’s 
decision to approve or not appr ove a variation of the rules. 
 (5) The notice to be published in the Official Journal must include a statement to the 
effect that, subject to the Administrative Appeals Tribunal Act 1975 , application 
may be made to the Administrative Appeal s Tribunal for review of the decision to 
which the notice relates. 
Note   registered owner is defined in section 6 of the Act. 
[4] Subregulation 16.10A (2) 
substitute 
 (2) If the prospective assignee does not pr opose, after the assignment, to apply the 
same rules governing use of the certification trade mark as the applicant for registration of the trade mark applies, or proposes to apply, the Commission must 
have regard to the following matters  in considering an application: 
 (a) whether under the proposed rules the at tributes a person must have to become 
an approved certifier are sufficient, in the opinion of the Commission, to 
enable a person to competently assess wh ether or not goods or services meet 
the certification requirements;  
 (b) whether the proposed rules would not  be to the detriment of the public; IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 42 
  
   (c) whether the proposed rules are satisfactory,  having regard to the criteria prescribed in 
regulation 16.6. 
[5] Subregulation 16.11 (2) 
substitute 
 (2) If the prospective assignee does not pr opose after the assignment to continue to 
apply the same rules governing use of the re gistered certificati on trade mark as the 
registered owner of the trad e mark applies, the Commissi on must have regard to the 
following matters in considering an application: 
 (a) whether under the proposed rules the at tributes a person must have to become 
an approved certifier are sufficient, in the opinion of the Commission, to 
enable a person to competently assess wh ether or not goods or services meet 
the certification requirements;  
 (b) whether the proposed rules would not  be to the detriment of the public; 
 (c) whether the proposed rules are sati sfactory, having regard to the criteria 
prescribed in regulation 16.6. 
[6] After regulation 16.11 
insert in Part 16 
16.12 Publication of rules 
 (1) The Registrar must publish the rules governing the use of th e certification trade 
mark as soon as practicable after a copy of  the rules is filed in accordance with 
subsection 173 (1) of the Act. 
 (2) The Registrar must publish the certified c opy of the rules, provided to the Registrar 
by the Commission in accordance with subs ection 175 (2) of the Act, as soon as 
practicable after the Registrar advertises  acceptance of the application in the 
Official Journal  in accordance with paragra ph 176 (3) (b) of the Act. 
 (3) The Registrar may publish the rules, or the certified copy of the rules, in any 
manner the Registrar thinks fit, including (but not limited to): 
               (a) a listing in a com puter database that is publicly available; or 
  (b) making the rules or certified copy of  the rules available for public inspection. 
[7] Paragraphs 17A.27 (1) (a) and (b) 
substitute 
 (a) the IRDA should not have been accepted, taking account of all the 
circumstances that existed when the IRDA was accepted (whether or not the Registrar knew then of  their existence); and 
 (b) it is reasonable to revoke the acceptance, taking account of all the 
circumstances;  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 43 
  
  [8] Paragraphs 17A.27 (2) (b) and (c) 
substitute 
 (b) this Subdivision again app lies in relation to the IRDA. 
[9] Part 17A, Division 5, after the heading 
insert 
 
Subdivision 1 Amendment or cessat ion of protection because of 
cancellation, limitation or non-renewal of international 
registration  
[10] After regulation 17A.42 
insert 
Subdivision 2 Amendment or cessati on of protection by Registrar 
17A.42A   Registrar’s powers  to amend or cease protection 
 (1) If all the conditions in subregulation (2) are met, the Registrar may do any of the 
following: 
 (a) declare that the protection extended to  a protected international trade mark is 
ceased; 
 (b) impose a condition or limitation on th e protection extended to a protected 
international trade mark; 
 (c) if a protected internat ional trade mark is alrea dy subject to a condition or 
limitation — impose or substitute an additional or different condition or 
limitation on the protection extended to the protected international trade mark; 
 (d) remove or amend an entry in the Record of International Registrations relating 
to a protected international trade mark. 
 (2) For subregulation (1) the conditions are as follows: 
 (a) within 12 months after the trade ma rk became a protected international trade 
mark the Registrar gave notice in wr iting of the Registrar’s intention to 
exercise a power or powers menti oned in subregulation (1), to: 
 (i) the holder of the protected international trade mark; and 
 (ii) any person recorded under regulation 17A.62 as claiming an interest or 
right in respect of the protect ed international trade mark; 
 (b) the Registrar gave the opportunity to  be heard to each person mentioned in 
subparagraph (a) (i) or (ii), in relation to  the Registrar’s inte ntion to exercise a 
power mentioned in subregulation (1); 
 (c) the Registrar is satisfied, having regard to all the circumstances that existed 
when the trade mark became a protected international trade mark (whether or IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 44 
  
  not the Registrar knew then of their existence), and the grounds for refusing 
protection mentioned in regulations 17A.31, that: 
 (i) the trade mark should not have beco me protected for some or all of the 
goods or services in respect of which it is protected; or 
 (ii) the protection of the trade mark  should have been subject to a condition 
or limitation, or an additional or different condition or limitation; 
 (d) the Registrar is satisfied that is it reasonable to exercise the power or powers 
mentioned in subregulation (1). 
 (3) For paragraph (2) (c), the circumstances to which the Registrar must have regard 
include the following: 
 (a) any error or omission (including an error or omission of judgment) that led 
directly or indirectly to the trade mark  becoming protected for some or all of 
the goods or services in respect  of which it is protected; 
 (b) any relevant obligation of Austra lia under an international agreement; 
 (c) any special circumstances making it appropriate, in the opinion of the 
Registrar, that: 
 (i) the trade mark not be protected fo r some or all of the goods or services 
in respect of which it is protected; or 
 (ii) the protection of th e trade mark be subject to  a condition or limitation, or 
an additional or different condition or limitation. 
 (4) For paragraph (2) (d), in deciding whet her or not it is reas onable to exercise a 
power or powers, the matters to which the Registrar must have regard include the 
following: 
 (a) any use that has been made of the trade mark; 
 (b) any past, current or proposed legal pr oceedings relating to the trade mark as a 
protected international trade mark or seeking amendment or cessation of its 
protection; 
 (c) any other action taken in relation to th e trade mark as a protected international 
trade mark;   
 (d) any special circumstances making it appr opriate for the Regist rar to exercise or 
not to exercise a power or powers mentioned in subregulation (1). 
 (5) The Registrar does not have a duty to c onsider whether or not to exercise a power 
under this Subdivision, whether or not the Registrar has been requested to do so.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 45 
  
  17A.42B   Notice to be given 
 (1) For paragraph 17A.42A (2) (a), the Re gistrar may give a written notice to the 
holder by sending it to: 
 (a) the address for service in Australia recorded for the holder in the Record of 
International Registrations; or 
 (b) if there is no address for service recorded for the holder in the Record of 
International Registrations — the address for the holder. 
 (2) The Registrar may notify any person if th e Registrar is satisfie d that it would be 
reasonable to do so in all the circumstances. 
17A.42C   Hearings and procedure 
 (1) The Registrar may conduct the foll owing hearings under this Subdivision: 
 (a) a hearing at which the Registrar may determine whether or not to exercise a 
power or powers mentioned in  subregulation 17A.42A (1); 
 (b) a preliminary hearing at  which the Registrar may gi ve directions as to the 
procedure to be adopted in a hear ing mentioned in paragraph (a). 
 (2) The Registrar may determine the proce dure to be adopted in  a hearing under this 
subdivision as the Registrar sees fit, accordi ng to the circumstances in the particular 
case. 
 (3) Regulation 21.14 does not apply to  a hearing under this subdivision. 
  Note   Regulation 21.14 provides for the conduct of pr oceedings generally under these Regulations . 
 (4) The Registrar may hear any person if th e Registrar is satisfied  that it would be 
reasonable to do so in all the circumstances. 
17A.42D   Effect of amendment or  cessation of protection by Registrar 
 (1) This regulation applies if the Registra r exercises any of th e powers mentioned in 
subregulation 17A.42A (1). 
 (2) Subject to subregulation (3), the exerci se by the Registrar of a power mentioned in 
subregulation 17A.42A (1) is taken to have ha d effect from the date  of effect of the 
protection of the protected internatio nal trade mark, and in particular: 
 (a) any reduction in scope of the protecti on is taken to apply from that date; and 
 (b) any condition or limitation imposed by th e Registrar is taken to have had effect 
from that date; and 
 (c) any removal or amendment of an entry in the Record of International 
Registrations is taken to have  had effect from that date. 
Note   See regulation 17A.4 for the meaning of date of effect . IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 46 
  
   (3) For subregulation (2), the ex ercise of a power mentioned in 
subregulation 17A.42A (1) has effect as follows: 
 (a) for the application of a provision in Part 12, 13 or 14 of the Act as applied by 
regulation 17A.39, or a provi sion in Part 13 of thes e regulations — from the 
date the power is exercised;  
 (b) for the application of subsect ion 230 (2) of the Act as applied by 
regulation 17A.71: 
 (i) in relation to a defendant wh o was the holder of the protected 
international trade mark before the exercise of the power — from the 
date the power is exercised; or 
 (ii) in relation to a defendant who wa s an authorised user of the protected 
international trade mark before the exercise of the power — from the 
date the defendant becomes aware of the exercise of the power. 
17A.42E   Registrar to notify Customs CEO 
 (1) If the Registrar exercises a power mentioned in subregulation 17A.42A (1) the 
Registrar must notify the Customs CEO in writing. 
 (2) Despite paragraph 17A.42D (3) (a), if  the Customs CEO seizes under Part 13 goods 
in respect of which the protected international trade mark was protected before the 
exercise of a power men tioned in subregulation 17A.42A (1), the Commonwealth 
is not liable for any loss or damage suffered because of the seizure unless: 
 (a) the Registrar gives the Customs CEO written notice in accordance with 
subregulation (1); and 
 (b) the seizure occurs after the notice is given to the Customs CEO.  
 (3) To avoid doubt, subregulation (2) doe s not, by itself, make the Commonwealth 
liable if the circumstances described in paragraphs (2) (a) and (b) exist.  
17A.42F   Appeal to Federal Court 
  A person who made submissions to the Re gistrar, or was heard by the Registrar, 
during the course of proceedings menti oned in paragraph 17A.42C (1) (a), may 
appeal to the Federal Court from a decisi on of the Registrar to exercise, or not 
exercise, a power mentioned in subregulation 17A.42A (1). 
Subdivision 3 Amendment or cessati on of protection by prescribed 
court 
[11] After regulation 17A.47 
insert 
Subdivision 4 Cessation of  protection for non-use  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 47 
  
   [12] After regulation 17A.71 
insert 
17A.72 Documents to be made available for public inspection 
  Section 217A of the Act and re gulation 21.11A apply in relation to: 
 (a) a trade mark that is the subject of an IRDA; or 
 (b) a protected international trade mark; 
as if the reference in subs ection 217A (1) to the time particulars of the application 
for registration of the trade mark are publis hed under section 30 were a reference to 
the time of inclusion of the particulars of the IRDA in the Record of International 
Registrations under subregulation 17A.66 (2). 
[13] After regulation 21.11 
insert 
21.11A Documents to be made available for public inspection 
 (1) For subsection 217A (1) of the Act each document held by the Re gistrar that relates 
to a trade mark is prescribed, ot her than a document mentioned in 
subregulation (2). 
 (2) For subregulation (1), the documents are: 
 (a) a document that would be privileged  from production in legal proceedings on 
the ground of legal profe ssional privilege; and 
 (b) a document that is subject to an or der of a court or tr ibunal that prohibits 
disclosure of the document or information in the document; and 
 (c) a document: 
 (i) whose production the Registrar ha s required under paragraph 202 (c) of 
the Act; and 
 (ii) that the Registrar is satisfied should not be made available for public 
inspection; and 
 (d) a document that solely contains evid ence of the use or pr oposed use of a trade 
mark; and 
 (e) a declaration stating the reasons fo r a request for expedited examination under 
regulation 4.18; and 
 (f) a document filed by an applicant for an extension of time under subsection 
224 (2) or (3) of the Act in relation to an application under those provisions, 
other than the application fo r an extension of time; and 
 (g) a document filed in the course of  opposition proceedings under the Act and 
Regulations, other than the notice of opposition; and 
 (h) a document containing any information that the Registrar requires to be held 
confidentially under paragraph 226A (1) (a) of the Act; and 
 (i) a document prepared by the Registrar, a Deputy Registrar or an employee in 
the Trade Marks Office that contains in formation obtained from a document to IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 48 
  
  which any of paragraphs (a) to (h) applie s, being information that is the reason, 
or contributes to the reason, why that  paragraph applies to the document. 
[14] After regulation 21.21 
insert 
21.21A No action permi tted until fee paid 
 (1) If a fee is payable in respect of the doing of an act by the Registrar or the Customs 
CEO, the Registrar or Custom s CEO must not do the act until the fee has been paid. 
 (2) Subject to subregulation (3), if: 
 (a) a fee is payable in respect of the doing of an act by a person other than the 
Registrar or the Customs CEO; or 
 (b) a fee is payable in respect of the filing of a document;  
the act is taken to have been done, or th e document is taken to  have been filed, 
despite of the failure to pay the fee. 
Note   File has the meaning given by section 6 of the Act. 
 (3) If the Registrar or the Customs CEO notifies under regulation 21.23 the person 
concerned or his or her agent,  that the fee has not been paid, the act is not taken to 
have been done, or the document is not take n to have been filed, before the day on 
which the fee is paid. 
[15] Regulation 21.23 
omit 
For subsection 223 (5) of the Act (which  deals with non-payment of fees), 
insert 
For subregulation 21.21A (3),  
[16] After regulation 21.24 
insert 
21.24A Period for doing certain act s — office not open for business 
  For subsection 223A (1) of the Act, the circumstance is that the act is done at: 
 (a) the Trade Marks Office; or 
 (b) a sub-office of the Trade Marks Office; 
that was not open for business. 
Note   Subsection 223A (1) provides as follows: 
‘(1) If the last day of a period provided by this Act (except this section) for doing an act is a day 
when the Trade Marks Office, or a sub-office of th e Trade Marks Office, is not open for business,  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 49 
  
  the act may be done in prescribed circumstances on the next day when th e office or sub-office is 
open for business.’. 
21.24B Days when office not open for business 
 (1) For paragraph 223A (2) (a) of the Act, the days on which the Trade Marks Office, 
or a sub-office of the Trade Marks Office, is not open for business are: 
 (a) Saturday; and  (b) Sunday; and 
 (c) Australia Day; and 
 (d) Anzac Day. 
 (2) For paragraph 223A (2) (b) of the Act, the Director General of  IP Australia is a 
prescribed person. 
 (3) For paragraph 223A (2) (b) of the Ac t, the prescribed way of publishing a 
declaration is in the Offici al Journal of Trade Marks. 
21.24C Period for doing certain acts — acts to which section 223A does not 
apply 
  For subsection 223A (7) of the Act,  the following acts are prescribed: 
 (a) an act done in opposition proceedings , other than the filing of a notice or 
request with the Trade Marks O ffice, under the following provisions: 
 (i) Part 5, 9 or 21 of the Act;  
 (ii) Part 5, 9, 17A or 21 of these Regulations;  (b) an act done in relation to pro ceedings in a court or a tribunal; 
 (c) the filing of a notice of opposition with  a court under section 96 of the Act; 
 (d) an act done under Part 13 or 16 of the Act;  (e) an act done under Part 13, 16 or 20 of these Regulations. 
[17] Schedule 9, it em 22, second column 
omit      or another document 
[18] Schedule 9, after item 34 
insert 
35  (a) request for a copy of a file or part of a file under 
regulation 21.11A $30 for each file that is the 
subject of a request 
  (b) for each request of 20 pages or less no additional charge 
  (c) for each request involving more than 20 pages from a 
single file $1 for each additional page 
over 20 from the file IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 50 
  
  [19] Schedule 10 
after 
Mongolia 
insert 
Montenegro 
[20] Schedule 10 
omit 
Serbia and Montenegro 
insert 
Serbia 
[21] Schedule 10 
after 
Viet Nam 
insert 
     Yemen  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 51 
  
  Schedule 7 Amendments of Trade Marks Regulations 
1995  commencing on the commencement 
of Part 2 of Schedule 1 to the Trade Marks 
Amendment Act 2006 
(regulations 7 and 10) 
[1] Paragraph 4.2 (1) (d) 
substitute 
 (d) include sufficient information to enable  the Registrar to es tablish the identity 
of the applicant; and 
[2] After regulation 4.2 
insert 
4.2AA Divisional application — a dditional requirement for filing 
  A divisional application must contain the following information: 
 (a) a statement that the application is a divisional application;  
 (b) a statement identifying the parent application. 
[3] Subregulation 4.3 (5) 
omit 
into English. 
insert 
     into English, if required to do so by the Registrar at the time of application or later. 
[4] Paragraph 4.7 (1) (d) 
omit 
initial 
insert 
parent IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 52 
  
  [5] Subparagraph 4.13 (1) (c) (v) 
omit 
12 months 
insert 
6 months 
[6] Regulations 4.16 and 4.17 
omit 
[7] After regulation 6.4 
insert 
6.5 Amendment after particulars published — notice of opposition 
 (1) For subsection 65A (4) of the Act (w hich deals with opposition to granting a 
request for amendment after particulars of the application have been published), a 
person may oppose a request for amendmen t by filing a notice of opposition with 
the Registrar. 
 (2) A notice of opposition must be: 
 (a) in an approved form; and 
 (b) filed within 1 month after the requ est for amendment is advertised in the 
Official Journal . 
        (3)   The opponent must serve a copy of the notice on the applicant. 
6.6 Amendment after particulars published — opposition proceedings 
  For subsection 65A (4) of the Act (w hich deals with opposition to granting a 
request for amendment after particulars of the applica tion have been published), 
regulations 5.7 to 5.17 (inclusive) appl y to an opposition to a request for 
amendment. 
[8] Paragraph 7.2 (e) 
omit 
initial 
insert 
parent 
[9] Paragraph 7.2 (f) 
omit 
initial  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 53 
  
  insert 
parent 
[10] Regulation 9.1,  including the note 
substitute 
9.1 Applications for removal etc 
  For paragraph 92 (2) (a) of the Act (which  deals with applications), an application 
for the removal of a trade mark from the Register must be in an approved form. 
[11] Subregulation 9.2 (2) 
omit 
     , and the accompanying declaration, 
[12] Subregulation 9.4 (4) 
substitute 
 (4) For section 97 of the Act, there is ta ken to be no opposition to the application if: 
 (a) under subregulation (3), opposition pr oceedings are taken to have ended but 
are not taken to have been di scontinued or dismissed; and 
 (b) the Registrar is satisfied that th e application for removal is in order. 
Note   Section 97 provides for the removal of a trade mark from the Register if an application for 
removal is unopposed. 
[13] Regulation 17A.2, definition of Common Regulations 
omit 
1 January 1998. 
insert 
3 October 2006. 
[14] Regulation 17A.2, after definition of Common Regulations  
insert 
Contracting Party of the holder  has the meaning given by Rule 1 (xxvi bis) of 
the Common Regulations. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 54 
  
  [15] Regulation 17A.2, definition of date of recordal 
substitute 
date of recording means the date recorded in the International Register as the 
recordal date for a request made under Article 3ter(2) of the Protocol for extension 
of protection to Australia.  
[16] Regulation 17A.9 
omit 
filed with the Registrar. 
insert 
filed. 
[17] Subregulations 17A.10 (1) and (3) 
omit 
Office of origin 
insert 
Office of the Contracting Party of the holder 
[18] Regulation 17A.14 
omit 
The expression 
insert 
 (1) The expression 
[19] Regulation 17A.14 
insert 
 (2) If a term has been identified by the International Bureau as being: 
 (a) too vague for the purposes of classification; or 
 (b) incomprehensible; or  (c) linguistically incorrect; 
      the term must not be used in an IRDA to specify the goods or services in respect of  
which protection is sought, unless the Regi strar is satisfied that the term is 
sufficiently clear in the circumstances.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 55 
  
  [20] After regulation 17A.14 
insert 
17A.14A   Representation of trade marks 
  If the representation of a trade mark in  an IRDA includes words of a language other 
than English, the holder of the IRDA must file a translation of the words into 
English, if required to do so by the Registrar. 
Note   Rule 9 (4) (a) (xii) of the Common Regulations provides that a transliteration is required if 
the trade mark consists of or contains matter in  characters other than Latin characters or numbers 
expressed in numerals other than Arabic or Roman numerals. 
[21] Subparagraph 17A.21 (1) (c) (v) 
omit 
12 months 
insert 
6 months 
[22] Subregulation 17A.33 (3) 
omit 
unless, within 3 months after the notice of opposition is filed, 
insert 
until 
[23] Subregulation 17A.34 (2) 
substitute 
 (2) The Registrar must tell the Intern ational Bureau of his or her decision. 
[24] After Subdivision 3 
insert 
Subdivision 3A Cancellation or limitati on of an international registration 
17A.35A   Cancellation 
  If the International Bureau cancels an international registration in whole or in part 
the IRDA ceases, to the extent of th e cancellation, when the international 
registration is cancelled. IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 56 
  
  17A.35B   Duties and powers of Regi strar — notification of limitation by 
International Bureau 
 (1) This regulation applies if the International Bureau notifies the Registrar that a 
holder of an international registration in respect of a trade mark that is the subject 
of an IRDA but has not become prot ected, has placed a limitation on the 
registration. 
 (2) Subject to this regulation, a limitation mentioned in subregulation (1) has effect 
from the date the limitation was recorded in the International Register in 
accordance with Rule 27 (1) of the Common Regulations. 
 (3) The Registrar may, within the declarat ion period declare, under Rule 27 (5) of the 
Common Regulations, that the limitation has: 
 (a) no effect on the IRDA; or  (b) partial effect on the IRDA. 
 (4) A declaration unde r subregulation (3): 
 (a) has effect from the date the limit ation was recorded in the International 
Register; and 
    (b) is not effective unless the Regist rar sends a copy of the declaration to the 
International Bureau during the declaration period. 
 (5) On appeal from a declaration of the Re gistrar under subregulation (4), a prescribed 
court may: 
 (a) allow a limitation according to its terms; or 
 (b) declare, under Rule 27 (5) of the Co mmon Regulations, that the limitation has: 
 (i) no effect in Australia; or 
 (ii) partial effect in Australia. 
 (6) A decision of a prescribed court under s ubregulation (5) has effect from the date 
the limitation was recorded in the International Register. 
 (7) The Registrar must, after the expiration of the relevant appeal period, make any 
amendment to the Record of International Registrations that is necessary to give effect to a limitation allowed, or a de claration made, under this regulation. 
 (8) In this regulation: 
declaration period  means the period of 18 months after the International Bureau 
notifies the Registrar that a holder has imposed a limitation on the IRDA. 
limitation means a limitation, in resp ect of Australia, in re lation to the goods or 
services mentioned in an international re gistration recorded in the International 
Register under Article 9
bis (iii) of the Protocol.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 57 
  
  [25] After subregulation 17A.36 (2) 
insert 
 (2A) If: 
 (a) the Registrar accepts an IRDA; and  (b) opposition to the IRDA is filed with in the period allowed under paragraph 
17A.29 (2) (b); and 
 (c) the opposition has been dismissed or withdrawn; 
               the trade mark that is th e subject of the IRDA become s a protected international 
               trade mark after the opposition has been di smissed or withdrawn. 
[26] After subregulation 17A.36 (3) 
insert 
 (3A) If: 
 (a) the Registrar accepts an IRDA; and  
 (b) opposition to the IRDA is filed within the opposition period; and  
 (c) an appeal is made from the d ecision on the opposition within the appeal 
period, or any extension of that period; and 
 (d) the appeal has been dismissed or withdrawn; 
the trade mark becomes a protected international trade mark, to the extent permitted 
by the decision on the opposition, after th e appeal has been dismissed or 
withdrawn. 
[27] After subregulation 17A.38 (1) 
insert 
 (1A) A notice mentioned in subregulation (1) may be: 
 (a) given to the Registrar by  the holder of the IRDA; or 
 (b) passed on to the Registrar by the In ternational Bureau as part of an 
international application. 
[28] Subregulation 17A.39 (1) 
omit 
and 13.3 
insert      , 13.3 and 21.32 IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 58 
  
   [29] Paragraph 17A.39 (2) (e) 
substitute 
 (e) to the Register is taken to be a reference to the Record of International 
Registrations; and 
 (f) to a trade mark the registration of wh ich has ceased is taken to be a reference 
to a protected international trade mark in relation to whic h the extension of 
protection in Australia has ceased. 
[30] After regulation 17A.41 
insert 
17A.41A   Duties and powers of Regi strar — notification of limitation by 
International Bureau 
 (1) This regulation applies if the International Bureau notifies the Registrar that a 
holder of an international re gistration in respect of a pr otected international trade 
mark has placed a limitation on the registration. 
 (2) Subject to this regulation, a limitation mentioned in subregulation (1) has effect 
from the date the limitation was recorded in the International Register in 
accordance with Rule 27 (1) of the Common Regulations. 
 (3) The Registrar may, within the declarat ion period declare, under Rule 27 (5) of the 
Common Regulations, that the limitation has: 
 (a) no effect on the protected international trade mark; or 
 (b) partial effect on the prot ected international trade mark. 
 (4) A declaration unde r subregulation (3): 
                (a) has effect from the date the limitation was recorded in the International 
Register; and 
 (b) is not effective unless the Registra r sends a copy of the declaration to the 
International Bureau during the declaration period. 
 (5) On appeal from a declaration of the Re gistrar under subregulation (4), a prescribed 
court may: 
 (a) allow a limitation according to its terms; or 
 (b) declare, under Rule 27 (5) of the Co mmon Regulations, that the limitation has: 
 (i) no effect in Australia; or 
 (ii) partial effect in Australia. 
 (6) A decision of a prescribed court under s ubregulation (5) has effect from the date 
the limitation was recorded in the International Register.  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 59 
  
   (7) The Registrar must, after the expiration of the relevant appeal period, make any 
amendment to the Record of International Registrations that is necessary to give 
effect to a limitation allowed, or a de claration made, under this regulation. 
 (8) In this regulation: 
declaration period  means the period of 18 months after the International Bureau 
notifies the Registrar that a holder of an internationa l registration has imposed a 
limitation on the registration. 
limitation means a limitation, in resp ect of Australia, in re lation to the goods or 
services mentioned in an international re gistration recorded in the International 
Register under Article 9bis (iii) of the Protocol. 
[31] Regulation 17A.43 
before 
an aggrieved person, 
insert      the Registrar or 
[32] Subregulation 17A.44 (2) 
before 
an aggrieved person, 
insert 
the Registrar or 
[33] Subregulation 17A.45 (1) 
before 
an aggrieved person, 
insert 
the Registrar or 
[34] After paragraph 17A.45 (2) (d) 
insert 
 (e) because the Registrar wrongfully ma de a declaration under subregulation 
17A.35B (3) or 17A.41A (3). IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 60 
  
  [35] Paragraph 17A.48 (4) (g) 
substitute 
 (g) to the date on which the application for registration of the trade mark was 
filed, or the filing date in respect of the application for registration of the trade 
mark, is taken to be a reference to: 
 (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 3ter (2) of the Protocol — the date  of recording of the request. 
[36] Subregulation 17A.48 (7) 
omit 
must 
insert 
must, if no appeal has been made at th e end of any relevant appeal period, 
[37] After section 17A.71 
insert 
17A.73 Security for costs 
  If a person who neither resides nor  carries on business in Australia: 
 (a) gives notice of opposition to an IRDA under regulation 17A.29 ; or 
 (b) applies to the Registrar under regulation 17A.48 for the cessation of the 
protection extended to a protec ted international trade mark; 
the Registrar may require the person to give  security for the costs of the proceeding 
and may, if security is not given, dismiss the proceeding.  
[38] Paragraphs 21.28 (1) (c), (d) and (e) 
substitute 
 (c) making a divisional application fo r the registration of a trade mark under 
subsection 45 (1) of the Act; 
[39] Paragraphs 21.28 (1) (ea), (i), (l) and (m)  
omit 
  IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 61 
  
  [40] Schedule 9, item 3, column 3 
omit 
$270 
insert 
$270 for each class 
[41] Schedule 9, item 3, column 3 
omit 
$40 
insert 
$40 for each class 
[42] Schedule 9, item 3, column 3 
omit 
$330 
insert 
$330 for each class 
[43] Schedule 9, item 4 
substitute 
 
4 Requesting an amendment under section 64, 65 or 65A of the Act to 
include an additional prescribed class of goods or services in an application:  
  (a) application under section 51 for a series of trade marks $330 for each class 
  (b) any other case $180 for each class 
[44] Schedule 9, item 10, column 2 
omit 
12 months 
insert 
6 months 
[45] Further amendments — date of recording   The following provisions are amended by omitting ‘date of recordal’ and inserting 
‘date of recording’: 
 • paragraph 17A.4 (1) (b) IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,  IP/N/1/AUS/T/4/Add.2 
Page 62 
  
   • paragraph 17A.28 (2) (b) 
 • subregulation 17A.48 (4), note 
 • paragraph 17A.52 (2) (a) 
 • paragraph 17A.53 (2) (a).   IP/N/1/AUS/D/4/Add.1, IP/N/1/AUS/I/4/Add.2,  
 IP/N/1/AUS/P/3/Add.2, IP/N/1/AUS/P/6/Add.3,   IP/N/1/AUS/T/4/Add.2 
 Page 63 
  
  Schedule 8 Amendment of Trade Marks Regulations 
1995  commencing on 1 April 2007 
(regulation 7) 
[1] Regulation 17A.2, definition of Common Regulations 
omit 
3 October 2006. 
insert      1 April 2007. 
Note 
1. All legislative instruments and compilations  are registered on the Federal Register of 
Legislative Instruments kept under the Legislative Instruments Act 2003 . See 
www.frli.gov.au . 
 
__________