WORLD TRADE  
ORGANIZATION  IP/N/1/AUS/P/6 
17 December 2007 
 
 (07-5608) 
Council for Trade-Related Aspects  
of Intellectual Property Rights Original:   English 
 
 
MAIN DEDICATED INTELLECTUAL PROPERTY  
LAWS AND REGULATIONS NOTIFIED UNDER  
ARTICLE 63.2 OF THE AGREEMENT 
 
AUSTRALIA 
 
 The present document reproduces the text1 of the following laws and regulations, notified by 
Australia under Article 63.2 of the Agreement (see document IP/N/1/AUS/2).  
 Page 
 
- Patents Regulations 1991 - 1991 No.71 as amended - Dated 30 April 1991 
 2 
- Patents Amendment Regulations 2001 (No.1) - 2001 No.98 - Dated 16 May 2001  321 
- Patents Amendment Regulations 2001 (No.2) - 2001 No.184 - Dated 28 June 2001  373 
- Patents Amendment Regulations 2001 (No.3) - 2001 No.345 - Dated 20 December 2001  375 
- Patents Amendment Regulations 2002 (No.1) - 2002 No.59 - Dated 27 March 2002  381 
- Patents Amendment Regulations 2002 (No.2) - 2002 No.100 - Dated 16 May 2002 
 392 
- Patents Amendment Regulations 2002 (No.3) - 2002 No.263 - Dated 30 October 2002. 
 395 
- Patents Amendment Regulations 2002 (No.4) - 2002 No.317 - Dated 12 December 2002 
 397 
- Patents Amendment Regulations 2003 (No.1) - 2003 No.71 - Dated 16 April 2003 
 406 
- Patents Amendment Regulations 2003 (No.2) - 2003 No.213 - Dated 14 August 2003 
 408 
- Patents Amendment Regulations 2003 (No. 3) - 2003 No.316 - Dated 4 December 2003 
 416 
- Patents Amendment Regulations 2004 (No.1) - 2004 No.23 - Dated 19 February 2004  461 
- Patents Amendment Regulations 2004 (No.2) - 2004 No.193 - Dated 24 June 2004  463 
- Patents Amendment Regulations 2004 (No.3) - 2004 No.250 - Dated 19 August 2004  468 
 
                                                      
1 In English only.  IP/N/1/AUS/P/6 
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Patents Regulations 1991 
 
Statutory Rules 1991 No. 71 as amended 
 
made under the  
Patents Act 1990 
__________________________________________________________________________________ 
  This compilation was prepared on 29 November 2000 taking into account amendments up to SR 2000 No. 317 
 
This Statutory Rule has uncommenced amendments which are not incorporated in this compilation 
 For details of the amendments, please see Statutory Rules 2000 No. 317  Prepared by the Office of Legislative Drafting, 
Attorney-General’s Department, Canberra  IP/N/1/AUS/P/6 
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  Contents 
 
Chapter 1 Introductory  
 
 1.1 Name of Regulations [ see Note 1] 
 1.2 Commencement  1.3 Interpretation 
 1.4 English text of treaties 
 1.5 Prescribed periods: deposit requirements  1.6 Disclosure  1.7 Verification of translations  of international applications 
 
Chapter 2 Patent rights, ownership and validity 
 
 2.1 Applications by co-owners for directions  2.2 Publication or use: prescribed circumstances and periods  2.3 Prescribed period: publication or use affecting validity  2.4 Prescribed period: patents of addition 
 2.5 Prescribed period: assertion that  invention is not patentable 
 2.6 Prescribed period: notification of assertion of invalidity of petty patent 
 2.7 Documents to accompany notice of assertion of invalidity  
Chapter 3 From application to acceptance 
 
Part 1 Inventions generally  
 3.1 Prescribed documents: patent applications  3.2 Specifications  3.3 Abstracts 
 3.4 Substitute abstracts 
 3.5 Filing date  3.6 Requests to make determ inations between applicants 
 3.7 Form of certain applications  3.8 Time within which applications are to be made following certain decisions and 
declarations 
 3.9 Prescribed period: treatment of complete application as provisional  3.10 Prescribed period: making of complete applications  3.11 Making divisional applications  3.12 Priority dates generally  3.13 Priority dates: certain persons and applications 
 3.14 Priority dates: certain amended claims 
 3.15 Prescribed period and form of request for examination  3.16 Prescribed grounds and period for examination  3.17 Requirement for Commissioner to direct or expedite examination  3.18 Report of Commissioner: examination 
 3.19 Conduct of examination 
 3.20 Requests for deferment of examination or modified examination  3.21 Prescribed foreign countries: requests for deferment of examination and modified 
examination 
 3.22 Consideration of petty patent application 
 IP/N/1/AUS/P/6 
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  Part 2 Inventions that are micro-organisms 
 
 3.23 Documents in accepted applications  and patents involving micro-organisms 
 3.24 Commissioner may request samples and viability statement  3.25 Request for Commissioner’s certificate authorising release of sample of a micro-
organism 
 3.26 Breach of undertakings given in respect of micro-organisms  3.27 Procedure in proceedings  for breach of an undertaking 
 3.28 Relief in proceedings for breach of undertakings  3.29 Notification that a deposit requirement has ceased to be satisfied 
 3.30 Prescribed period: deposit re quirements taken to be satisfied 
 3.31 Application for declaration that deposit requirements are not satisfied  
Chapter 4 Publication 
  4.1 Prescribed information: applicants and applications 
 4.2 Notice that specification is open to public inspection  4.3 Prescribed documents: public inspection  
Chapter 5 Opposition 
  5.1 Application of this Chapter 
 5.2 Interpretation  5.3 Filing of opposition  5.3A Amendment of notice of opposition  5.4 Filing of statement 
 5.5 Dismissal of opposition 
 5.6 Determination of opposition  5.7 Opponent to serve copy of substitute statement  5.8 Time for giving of evidence  5.9 Amendment of statement  5.10 Conduct of proceedings to which this Chapter applies 
 5.11 Commissioner may inform himself or herself 
 5.12 Hearing of opposition  5.13 Representations to Commissioner  5.14 Commissioner not required to hold hearing  5.15 Withdrawal of opposition 
 
Chapter 6 Grant and term of patents 
 Part 1 Patents generally 
 
 6.1 Publication of notice of grant of standard patent 
 6.2 Prescribed period: grant of standard patent 
 6.3 Date of patent  6.4 Form of application for sealing of duplicate of patent  6.5 Application for extensi on of term of petty patent 
 6.6 Deciding an application for ex tension of term of petty patent 
 
Part 2 Extension of pharmaceutical patents 
 
 6.7 Definitions  6.8 Information to accompany application  IP/N/1/AUS/P/6 
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   6.9 Application without pre-TGA marketing approval 
 6.10 Application with pre-TGA marketing approval  6.11 Further information  
Chapter 7 Patents of addition 
 
 7.1 Form of application for grant of patent of addition etc  7.2 Form of application for revocation of pa tent and grant of patent of addition instead 
 
Chapter 8 PCT applications and Convention applications 
 
Part 1 PCT applications 
 
 8.1 International applications take n to be applications under the Act 
 8.1A Title of an invention 
 8.2 Prescribed documents: PCT application 
 8.3 Modification of Act to apply to PCT applications  8.4 Form of request and prescrib ed documents: PCT applications 
 
Part 2 Convention applications 
  8.5 Convention countries 
 8.6 Particulars required for Convention application  8.7 Form of request in relation to wit hdrawn, abandoned or refused applications 
 
Chapter 9 Re-examination 
 
 9.1 Commissioner may re-examine complete specification when grant opposed  9.2 Request for re-examination of complete specification  9.3 Copy of report on re-examination  9.4 Prescribed period: statement disputing report by Commissioner  9.5 Completion of re-examination 
 
Chapter 10 Amendments 
 
 10.1 Form of amendments  10.2 Commissioner to consider and d eal with requests for leave to amend 
 10.3 Amendments not allowable 
 10.4 Commissioner to refuse request for leave to amend  10.5 Commissioner to grant leave to amend  10.6 Time for allowance of amendments  10.7 Correction of Register or patent  10.8 Prescribed decisions: appeal to Federal Court 
 10.9 Pending proceedings: amendmen ts relating to micro-organisms 
 10.10 Prescribed period: filing of court order  10.11 Form of direction by Commissioner: patents  10.12 Form of direction by Commissioner: applications  10.13 Form of direction by Commissione r: extension of petty patent term 
 10.14 Form of request: claim under assignment or agreement 
 
Chapter 11 Infringement 
 
 11.1 Infringement exemptions: prescribed foreign countries IP/N/1/AUS/P/6 
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Chapter 12 Compulsory licences and revocation of patents 
 
 12.1 Lodgment of applications for compulsory licences  12.2 Prescribed period: revocation of standard patent 
 12.3 Form of notice: offer to surrender patent 
 12.4 Applications to revoke patents  
Chapter 13 Withdrawal and lapsing of applications and ceasing of patents 
  13.1 Publication of notice of withdrawal of application 
 13.2 Prescribed period: request for examination of applications  13.3 Prescribed period: continuation fees  13.4 Prescribed period: acceptance of request and specification  13.5 If applications lapse 
 13.6 Time for payment of rene wal fee for standard patent 
 
Chapter 15 Special provisions relating to associated technology 
 
 15.1 Time for restoration of application for patent  15.2 Requirements for reinstatemen t of international applications 
 15.3 Prescribed period: order re lating to a standard patent 
 
Chapter 17 The Crown 
 
 17.1 Prescribed period: order re lating to a standard patent 
 17.2 Prescribed period, document and fee: filing of international applications 
 
Chapter 19 The register and official documents 
 
 19.1 Particulars to be registered  19.2 Request for information from Commissioner 
 
Chapter 20 Patent attorneys 
 Part 1 Introductory 
  20.1 Interpretation 
 20.2 How to apply under Chapter 20  20.2A Accreditation of courses of study  20.2B Provisional accreditation  
Part 2 Obtaining registration for the first time 
 
Division 1 Generally 
 
 20.3 Requirements for registration  20.3A Currency of pass or exemption 
 20.4 Procedure for registration 
 20.5 Certificate of registration   IP/N/1/AUS/P/6 
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  Division 2 Prescribed subjects and academic qualifications 
 
 20.6 Board examinations  20.7 Time for holding Board examinations  20.8 Examinable subject matter 
 20.9 Admission to sit for a Board examination 
 20.10 Notification of Board examination results  20.11 Reasons for failure of Board examination  20.12 Supplementary Board examination  20.13 Exemption from examination 
 20.14 Approval of courses and examinations 
 20.15 Approval of academic qualifications  20.16 Advice of completion of examinable subjects and of academic qualifications  
Division 3 Rights of registered patent attorneys 
 
 20.17 Lien  
Part 3 Renewal of registration: payment of annual fee 
 
 20.18 Annual registration fee 
 20.19 Restoration of patent attorney’s name to the Register 
 20.19A Voluntary removal of name from register  
Part 4 Discipline 
 
Division 1 Complaints, decisions of the Di sciplinary Tribunal and consequential action 
 
 20.20 Complaints  20.21 Authorisation to bring proceedings against a registered patent attorney 
 20.22 Bringing of proceedings  20.23 Decision of Disciplinary Tribunal 
 20.24 Publication of decision 
 20.25 Completion of outstanding business  
Division 2 Procedure etc relating to the Disciplinary Tribunal 
  20.26 Procedure of Disciplinary Tribunal 
 20.27 Hearings to be public except in special circumstances  20.28 Representation before Disciplinary Tribunal  20.29 Summoning of witnesses  20.30 Offences by persons appear ing before Disciplinary Tribunal 
 20.31 Protection of person constituting Disciplinary Tribunal, witnesses etc 
 
Part 5 Administration 
 Division 1 The Professional Standards B oard for Patent and Trade Marks Attorneys 
  20.32 Constitution of Board (Act, s 227A) 
 20.34 Term of office of Board members  20.35 Resignation and removal of members from Board  20.37 Meetings of the Board  20.38 Member presiding at meetings of the Board IP/N/1/AUS/P/6 
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   20.39 Quorum for Board meetings 
 20.40 Absence of Chairperson from meeting — leave from Board  
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal 
  20.41 Establishment of Disciplinary Tribunal 
 20.42 Disciplinary Tribunal: substantive appointments  20.43 Disciplinary Tribunal: acting appointments  20.44 Qualifications for holding, or acting as, Disciplinary Tribunal  20.45 Disclosure of interest 
 
Chapter 21 Administration 
 
 21.1 Patent Office and sub-offices  21.2 Employees to whom Commissioner may delegate (Act s 209 (1)) 
 
Chapter 22 Miscellaneous 
 Part 1 Fees and costs  Division 1 Fees 
 
 22.1 Fees generally  22.2 General fees  22.2A Payment of fees other than renewal or continuation fees  22.3 General fees for international applications 
 22.4 Fees for international applications payabl e for the benefit of the International Bureau 
 22.5 PCT Fund  22.6 Exemption from fees  22.7 Refund of certain fees  
Division 2 Costs 
 
 22.7A Proceedings to which this Division applies  22.8 Costs  
Part 2 Other matters 
 
 22.9 Death of applicant or nominated person  22.10 Address for service  22.11 Extension of time  22.12 Evidence  22.13 Declarations 
 22.14 Directions not otherwise prescribed 
 22.15 Documents to be in English  22.16 Documents other than specifications and abstracts  22.17 Incapacity of certain persons  22.18 Destruction of documents 
 22.19 Copies of certain documents to be supplied 
 22.20 International applications and the Patent Office  22.21 Protection or compensation of certain persons  22.22 Exercise by Commissioner of certain powers  22.23 Hearings  IP/N/1/AUS/P/6 
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   22.24 Practice and procedure other than for opposition proceedings 
 22.25 Requirements cannot be complied with for reasonable cause  22.26 Review of decisions  
Chapter 23 Transitional and savings provisions 
 
 23.1 Saving: prohibition orders  23.2 Delegation: certain matters  referred to in this Chapter 
 23.3 Opposition to grant: practice and procedure  23.4 Certain opposition: practice and procedure 
 23.5 Fees payable for certain matters relating to opposition 
 23.6 Certain delegations: opposition  23.7 Certain undertakings  23.8 Restoration of lapsed applications or ceased patents  23.9 Certain continuation and renewal fees 
 23.10 Fee taken to have been paid 
 23.11 Supply of product referred to in section 117 of the Act  23.12 Certain withdrawn, aba ndoned or refused applications 
 23.13 Certain certificates of validity  23.14 Certain action under the 1952 Act  23.15 Amendment of petty patents 
 23.16 Certain applications under 1952 Act: time for acceptance 
 23.17 PCT applications to which subsection 89 (5) of the Act does not apply  23.18 Certain priority dates: saving  23.19 Appointment of certain examiners  23.20 Patent attorneys: continued application of certain provisions 
 23.21 Patent Attorneys Professional Standa rds Board: continuation of appointments 
 23.22 Secretary to Patent Attorneys Professional Standards Board: continuation of 
appointment 
 23.23 Patent Attorneys Disciplinary Tribunal: continuation  23.24 Matters begun under the former attorneys Regulations not finally dealt with before 
the commencing day 
 23.25 Fees 
 23.26 Certain actions and proceedings  23.27 Professional Standards Board for Patent and Trade Marks Attorneys  23.28 Continuing effect of certain complaints  23.29 Patent attorney registration 
 23.30 Patent attorney qualifica tions and employment requirements 
 23.31 Patent attorney examination requirements  
Schedule 1 Budapest Treaty on the International Recognition of the Deposit of 
Microorganisms for the Purposes of Patent Procedure 
 
Schedule 1A Regulations under the Budapest Treaty on the International Recognition of the 
Deposit of Microorganisms for the Purposes of Patent Procedure 
 Schedule 2 Patent Cooperation Treaty  
Schedule 2A Regulations under the Patent Cooperation Treaty 
 Schedule 3 Formal requirements for documents to be filed  Schedule 4 Convention countries IP/N/1/AUS/P/6 
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Schedule 5 Prescribed topics 
 
  Group A Legal process and overview of intellectual property   Group B Professional conduct 
  Group C Trade mark law 
  Group D Trade mark practice   Group E Patent law   Group F Patent system   Group G Drafting patent specifications 
  Group H Interpretation and valid ity of patent specifications 
  Group I  Designs  
Schedule 6 Prescribed qualifications 
 
Schedule 7 Fees  
  Part 1 Patent attorneys   Part 2 General fees   Part 3 General fees for international applications   Part 4 Fees payable for the benefit of the International Bureau 
 
Schedule 8 Costs, expenses and allowances 
 
  Part 1 Costs   Part 2 Expenses and allowances 
 
Notes 
  IP/N/1/AUS/P/6 
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  Chapter 1 Introductory 
   
   
1.1 Name of Regulations  [see Note 1]  
  These Regulations are the Patents Regulations 1991 . 
 
1.2 Commencement 
 
 These Regulations commence on 30 April 1991. 
 
1.3 Interpretation 
 
 (1) In these Regulations, unless the contrary intention appears:    
 
  abstract  means abstract of a complete specification. 
 
  acceptance  means: 
               (a) in relation to a patent  request and complete specification relating to an 
application for a standard patent — acceptance of the patent request and 
complete specification under section 49 of the Act (“acceptance of patent 
request: standard patent”); and 
              (b) in relation to a patent  request and complete specification relating to an 
application for a petty patent — acceptance of the patent request and complete specification under section 50 of the Act (“consideration and 
acceptance of patent re quest: petty patent”). 
 
  basic documents  means documents filed in a Conven tion country in respect of a basic 
application. 
 
 certificate of verification  means a statement: 
 
              (a) that a document to wh ich the statement relates is a true and complete 
translation of the accompanying document to the best of the knowledge of the person who signs the statement; and 
  (b) that is dated and signed.  
  Disciplinary Tribunal  means the Patent and Trade Marks Attorneys Disciplinary 
Tribunal established under regulation 20.41. 
 
  former attorneys Regulations  means the Patent Attorneys Regulations in force 
immediately before the commencing day under the 1952 Act. 
 
  former patents Regulations  means the Patents Regulations in force immediately 
before the commencing day under the 1952 Act. 
 
  International Bureau  means the International Bur eau of the World Intellectual 
Property Organization and, as long as it subsis ts, the United International Bureaux for 
the Protection of Intellectual Property (BIRPI). 
 
  t h e  A c t  means the Patents Act 1990 . 
 IP/N/1/AUS/P/6 
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    the Tribunal  means the Administrative Appeals Tribunal. 
  (2) A reference in these Regulations to:    (a) the giving of a notice or other document; or 
  (b) the making of a request or an application; 
  to the Commissioner or the Patent Office includes a reference to the filing of the 
document. 
  (3) A reference in these Regulations to a docu ment that is open to public inspection is a 
reference to a document that may be inspected by the public at the Patent Office. 
  (4) Unless the contrary intention appears, if a document is given to a person by the 
Commissioner or the Patent Office, the docum ent is taken to have been given to the 
person on the day on which the document is dated by the Commissioner or the Office. 
 
1.4 English text of treaties 
 
 (1) The English text of the Budapest Treaty as in force for Australia on 30 April 1991 is 
the text set out in Schedules 1 (the Treaty) and 1A (the Regulations under the Treaty). 
 
 (2) The English text of the PCT as in force for Australia on 1 January 2000 is the text set 
out in Schedules 2 (the Treaty) and 2A (the Regulations under the Treaty). 
 
Note    This regulation is made for the pur poses of subsection 228 (5) of the Act. 
 
1.5 Prescribed periods: deposit requirements 
 
 (1) For the purposes of paragraph 6 (c) of the Act (“deposit requirements”), the 
prescribed period is from the filing date of the application to which the specification 
relates to: 
               (a) if the Commissioner makes a declaration under subsection 42 (1) of the Act 
(“micro-organisms ceasing to be reasona bly available”) in relation to the 
specification — the end of the period of 3 months from the date taken to be 
the date of filing of the specification under paragraph  
42 (2) (b) of the Act; and 
  (b) in any other case:                             (i) the end of the day immediately before the day on which the 
application becomes open to public inspection; or 
   (ii) immediately before acceptance; 
   whichever happens first.   (2) If a matter mentioned in paragraph 6 (c) of the Act has been included in the 
specification, the applicant or patentee is ta ken to consent to a micro-organism being 
obtained: 
               (a) after the period prescribed  in subregulation (1) in respect of the specification 
to which the application relates; and 
              (b) from the prescribed depos itary institution with which the micro-organism is 
deposited;  IP/N/1/AUS/P/6 
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    by a person to whom the Commissioner has granted the certification under 
regulation 3.25 (“request for Commissioner’s certificate authorising release of sample of a micro-organism”) in respect of the deposit. 
 
1.6 Disclosure 
 
 (1) For section 8 of the Act, the prescrib ed period for a Convention application is: 
               (a) for documents to which paragraph 8 (a) of the Act applies — from the date of 
making the application based on the basic application to immediately before 
acceptance; and 
  (b) for documents to which paragraph 8 (b) of the Act applies:                             (i) if th e application based on the basic application has been accepted — 
3 months from the date on which the Commissioner requests the 
translation; or 
                           (ii) if the application based on the basic application has not yet been 
accepted — from the date on which the Commissioner requests the translation to immediately before acceptance. 
  (1A) For section 8 of the Act, the prescribed period for a PCT application is: 
 
              (a) if the application b ased on the basic application has been accepted — 3 
months from the date on which the Commissioner requests the document; or 
              (b) if the application b ased on the basic application has not yet been accepted — 
from the date on which the Commissioner requests the document to 
immediately before acceptance. 
  (2) A matter that was claime d or disclosed in a disclaimer or acknowledgement of prior 
art in a basic application or in a specifi cation or other document filed in respect of, 
and at the same time as, the basic application is not taken to have been disclosed. 
 1.7 Verification of translations of international applications 
 
 For the purposes of subsection 10 (2) of the Act (“certain international applications to be 
taken to have been given an international fili ng date”), the translation of an international 
application that was not filed in the receiving Office in English must have with it a related 
certificate of verification.  
 
Chapter 2 Patent rights, ownership and validity 
   2.1 Applications by co-owners for directions 
  (1) An application under section 17 of the Act (“directions to co-owners”) must be in the 
approved form. 
  (2) A person making an application under that section must:  
              (a) file with the application a notice stating the facts on which the application is 
based; and 
  (b) serve a copy of the application a nd notice on the other patentee or patentees. 
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  2.2 Publication or use: prescribed circumstances and periods 
 
 (1) In this Regulation: 
 
  Paris Convention  means the Paris Convention for the Protection of Industrial 
Property of 20 March 1883, as in force for Australia on the commencing day. 
 
  recognised exhibition  means: 
               (a) an official or officially recognised international exhibition within the 
meaning of Article 11 of the Paris Convention or Article 1 of the Convention 
relating to International Exhibitions do ne at Paris on 22 November 1928, as 
in force for Australia on the commencing day; or 
              (b) an international e xhibition recognised by the Commissioner by a notice 
published in the Official Journal before the beginning of the exhibition. 
 
 (2) For the purposes of paragraph 24 (1) (a) of  the Act (“validity not affected by certain 
publication or use”), the followi ng circumstances are prescribed: 
   (a) the showing or use of the invention at a recognised exhibition;               (b) the publication of the invention during a recognised exhibition at which the 
invention was shown or used; 
  (c) the publication of the invention in  a paper written by the inventor and: 
    (i) read before a learned society; or                            (ii) publishe d with the inventor’s consent by or on behalf of a learned 
society; or 
               (d) the working in public of the invention within the period of 12 months before 
the priority date of a claim for the invention: 
    (i) for the purposes of reasonable trial; and 
                           (ii) if, b ecause of the nature of the invention, it is reasonably necessary 
for the working to be in public. 
  (3) Paragraphs 2 (a) and (b) are prescribed circumstances only if:  
              (a) at the time the application is made for a patent for the invention, the applicant 
has filed a notice stating that the invention has been exhibited; and 
              (b) before the complete sp ecification in respect of that application is open to 
public inspection, the applicant has file d a statement issued by the authority 
responsible for the exhibition in which: 
 
   (i) the invention and the exhibition are identified; and 
   (ii) the date of the opening of the exhibition is given; and 
                           (iii) where the first disclosure of the invention during the exhibition did 
not take place on that date — the date of that disclosure. 
 2.3 Prescribed period: publication or use affecting validity 
 
 (1) For the purposes of subsection 24 (1) of  the Act (“validity not affected by certain 
publication or use”), in the case of informati on of the kind referred to in paragraph 24 
(1) (a) of the Act, the prescribed period is:  IP/N/1/AUS/P/6 
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              (a) in the case of a circumstance mentioned in paragraph 2.2 (2) (a) or (b) 
(“publication or use: prescribed circumstances and periods”): 
                            (i) if the application claims priority from a basic application made 
within 6 months of the date of the first showing or use of the 
invention at a recognised exhibitio n — 12 months from the making 
of the basic application; and 
                           (ii) in any other case — 6 months after the first showing or use of the 
invention at the exhibition; and 
 
  (b) in the case of the circumstance mentioned in paragraph 2.2 (2) (c):                             (i) if the application claims priority from a basic application made 
within 6 months of the date of th e first reading or publication referred 
to in that paragraph — 12 months from the making of the basic 
application; and 
                           (ii) in any other case — 6 months after the first reading or publication; 
and 
               (c) in the case of the circumstance mentioned in paragraph 2.2 (2) (d) — 12 
months from the start of the first public working of the invention referred to 
in that paragraph. 
  (2) For the purposes of subsection 24 (1) of the Act, in the case of information of the 
kind referred to in paragraph 24 (1) (b) of the Act, the prescribed period is 12 months 
from the day when the information referred to in that paragraph became publicly 
available. 
 
2.4 Prescribed period: patents of addition 
 
 (1) For the purposes of section 25 of the Act (“validity: patents of addition”), the 
prescribed period is the period that commences on the priority date of the claim of the 
specification of the main invention and ends immediately before the priority date of 
the relevant claim of the specification of the patent of addition. 
  (2) In subregulation (1), a reference to the claim of the specification of the main 
invention is a reference to: 
    (a) the claim defining that main invention; or                            (b) if there are 2 or more claims defining the main invention — the claim 
 that has the earlier or earliest priority date. 
 2.5 Prescribed period: assertion that invention is not patentable 
 
 For the purposes of subsection 27 (1) of the Act (“notice of matters affecting validity of 
standard patents”), the prescribed period is fro m the day when the complete specification filed 
in relation to an application for a standard patent becomes open to public inspection to 
immediately before acceptance. 
 IP/N/1/AUS/P/6 
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  2.6 Prescribed period: notification of assertion of invalidity of petty patent 
 
 For the purposes of subsection 28 (1) of the Act (“notice of matters aff ecting validity of petty 
patents”), the prescribed period is 11 months from the day on which the petty patent is 
granted under subsection 62 (1) (“gran t and publication of petty patent”). 
 
2.7 Documents to accompany notice of assertion of invalidity 
 
 Notice of an assertion under subsection 27 (1) (“notice of matters affecting validity of 
standard patents”) or 28 (1) (“notice of matters affecting validity of petty patents”) of the Act 
must, where the assertion is based on a document, have with it: 
  (a) 2 copies of the document; and  (b) if the document is not in English — 2 copies of:  
  (i) a translation of the document into English; and 
  (ii) a related certificate of verification; and   (c) evidence of the date and place of publication of the document.   
Chapter 3 From application to acceptance  
 
Part 1 Inventions generally    3.1 Prescribed documents: patent applications 
  (1) For the purposes of subsection 29 (1) of  the Act (“application for patent”), an 
abstract, and a copy of the abstract are required to be filed with a patent request made in relation to a complete application. 
  (2) For the purposes of subsection 29 (1) of the Act, if a complete application is made, 
the following documents are required to be filed before acceptance: 
 
              (a) a notice by the applicant stating the entitlement of the nominated person to 
the grant of the patent; and 
              (b) if the applicant clai ms priority from another application — a notice by the 
applicant stating the entitlement of the nominated person to claim that 
priority; and 
  (c) if a micro-organism is deposited with a prescribed depositary institution: 
                            (i) if the deposit is an original deposit within the meaning of Rule 7.3 of 
the Budapest Treaty or a new deposit within the meaning of Rule 7.4 of that Treaty — a copy of a recei pt issued by the institution under 
Rule 7 of the Treaty; and 
                           (ii) if samp les of the micro-organism were transferred to that institution 
under Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution under Rule 7 of the Treaty; and 
                           (iii) if a recei pt referred to in subparagraph (i) or (ii) is not in English — a 
translation of the receipt into English and a related certificate of 
verification; and 
              (d) if the application re lies on section 6 of the Act (“deposit requirements”) — a 
notice by the applicant stating the entitle ment of the nominated person to rely 
on the deposit for the purposes of the Act; and  IP/N/1/AUS/P/6 
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                (e) if the application is an application to which subsection 34 (2) of the Act 
(“applications by eligible persons arising out of court proceedings”) 
applies — a copy of the court order decl aring the applicant to be an eligible 
person in relation to the invention so  far as claimed in a claim of the 
specification; and 
              (f) if the application is an application to which subsection 36 (3) of the Act 
(“other applications by eligible persons ”) applies — a copy of the declaration 
of the Commissioner that the applicant is  an eligible person in relation to the 
invention as disclosed in the specification; and 
              (g) if the request is for a pa tent of addition and is made  by a person authorised by 
the applicant or patentee — a statement authorising the person that is signed 
by the applicant or patentee. 
 
3.2 Specifications 
  (1) A provisional specification must be in the approved form. 
  (2) A complete specification must:    (a) be in the approved form; and   (b) comply substantially with the requirements of Schedule 3; and 
  (c) unless it is in electronic form, have with it a copy of the specification: 
    (i) marked on the first page as a true copy; and                            (ii) if the specification includes drawings — marked on the reverse side 
of each sheet of drawings as a true copy. 
 
 (3) If a complete specification is not in acco rdance with the Act or these Regulations, the 
Commissioner may: 
               (a) treat the complete app lication to which the specification relates as not having 
been filed; and 
  (b) return that specification to the applicant with: 
    (i) a written statement of the reasons for the return; and    (ii) any other document filed in respect of the application.  
 (4) If the Commissioner treats a complete sp ecification as having been filed, he or she 
may, within 1 month from the date of filing of the specification, direct the applicant to do anything necessary to ensure that the specification complies with those 
requirements. 
  (5) The complete application to which the complete specification relates lapses if an 
applicant to whom a direction has been given does not comply with the direction 
within: 
               (a) 3 months after the day on which that direction was given or the specification 
becomes open to public inspection,  whichever happens later; or 
  (b) if: 
                            (i) the direction is given to assist the Commissioner in relation to 
subregulation 3.4 (1) (“substitute abstracts”) in deciding whether a filed abstract is in accordance with these Regulations; and IP/N/1/AUS/P/6 
Page 18  
 
                             (ii) the Commissioner has specified in the direction a period of not less 
than 1 month within which the applicant must comply with the direction; 
   the period referred to in subparagraph (ii).  
 (6) If an application lapses under subr egulation (5), the Commissioner must: 
   (a) advertise that fact in the Official Journal ; and 
  (b) advise the applicant of the lapse.  3.3 Abstracts 
 
 (1) An abstract must consist of:                (a) a summary of the discl osure as contained in the description, the claims and 
any drawings, being a summary: 
                            (i) that indicates the technical field to which the invention pertains; and                            (ii) that is drafted in a way that allows the clear understanding of the 
technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention; and 
 
              (b) if applicable, any chemical formula that, among all the formulas contained in 
the specification, best characterises the invention. 
  (2) An abstract must be as concise as the di sclosure permits, preferably 50 to 150 words. 
 
 (3) An abstract must not contain statements on the alleged merits or value of the claimed 
invention or on its speculative application. 
  (4) Each main technical feature mentioned in  the abstract and illustrated by a drawing in 
the specification must be followed by a reference sign placed between parentheses. 
 
 (5) An abstract must be so drafted that it can efficiently serve as a scanning tool for the 
purposes of searching in the particular art, especially by assisting in the formulation of an opinion on whether there is a need to consult the specification itself for those 
purposes. 
 
3.4 Substitute abstracts 
 
 (1) If a filed abstract is not in accordance  with these Regulations, the Commissioner may 
prepare a draft of a new abstract in substitution for the filed abstract. 
 
 (2) A copy of the draft of a new abstract mu st be given to the app licant who may give the 
Commissioner written comments on the draft within 1 month of the draft being given to him or her. 
  (3) The Commissioner must take the comments into account in the final preparation of 
the new abstract. 
  (4) If the Commissioner prepares a new abstract, the new abstract is taken to be the 
abstract of the specification to which it relates. 
  IP/N/1/AUS/P/6 
 Page 19 
 
 
   (5) If an applicant who files a complete specif ication does not file with it an abstract, the 
Commissioner, within 1 month of the date of  filing of the complete specification, may 
direct the applicant to file an abstract  within 1 month of the day on which the 
direction is given. 
 
 (6) If an abstract is not filed within 1 month from the day on which the direction was 
given, the application lapses. 
  (7) If an application lapses under subr egulation (6), the Commissioner must: 
 
  (a) advertise that fact in the Official Journal ; and 
  (b) advise the applicant of the lapse.   (8) An abstract is not taken into account in construing the nature of the invention that is 
the subject of the specification to  which the abstract relates. 
 
3.5 Filing date 
 
 (1) For the purposes of section 30 of the Act (“filing date”), the filing date of a patent 
application is the date on which a patent requ est in relation to the application that is 
accompanied by a specification is filed. 
 
 (2) The Patent Office and each sub-office of  the Patent Office may provide facilities for 
the filing of documents when the Office or sub-office is not open to the public for business. 
 3.6 Requests to make determinations between applicants 
 
 (1) For the purposes of section 32 of the Act (“disputes between applicants etc.”), a 
request must be in the approved form. 
  (2) A party making a request must serve a copy  of that request on each other interested 
party as soon as practicable after the request is made. 
  (3) The Commissioner must publish a notice of the request in the Official Journal . 
  (4) If a party wishes to be heard by the Commissioner, the party must notify the 
Commissioner accordingly within 2 months of the publication of the notice. 
  (5) If, as a result of a request, the Commiss ioner determines under section 32 of the Act 
to change the name of a nominated pers on, notice of the determination must be 
published in the Official Journal . 
 3.7 Form of certain applications 
 
 For the purposes of paragraphs 35 (1) (b) (“a pplications by eligible persons following 
revocation by Commissioner”) and 36 (1) (b) (“othe r applications by eligible persons”) of the 
Act, an application must: 
 
 (a) be in the approved form; and  (b) have with it a notice by the applicant stating the grounds on which the application is 
made. 
 IP/N/1/AUS/P/6 
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  3.8 Time within which applications are to  be made following certain decisions and 
declarations 
 
  An application under section 29 of the Act (“application for patent”) must be made: 
 
 (a) in the case of an application of the kind described in section 33 of the Act 
(“applications by opponents etc.”) — w ithin 3 months of the decision of the 
Commissioner referred to in paragraph 33 (1 ) (b) or (2) (b) of the Act, as the case 
requires; or 
 (b) in the case of an application of the kind described in section 34 of the Act 
(“applications by eligible persons aris ing out of court proceedings”) — within 
3 months of the declaration of a court under subsection 34 (1) of the Act; or 
 (c) in the case of an application of the kind described in section 35 of the Act 
(“applications by eligible persons follo wing revocation by Commissioner”) — within 
3 months of the declaration of the Commissioner under subsection 35 (1) of the Act; 
or 
 (d) in the case of an application of the ki nd described in section 36 of the Act (“other 
applications by eligible persons”) — with in 3 months of the declaration of the 
Commissioner under subsection 36 (1) of the Act. 
 3.9 Prescribed period: treatment of complete application as provisional 
 
 For the purposes of subsection 37 (1) of the Act (“complete application may be treated as 
provisional”), the period of 12 months from the filing date of the complete application is 
prescribed. 
 
3.10 Prescribed period: making of complete applications 
 
 For the purposes of section 38 of the Act (“time for making complete application”), the period 
of 12 months from the filing date of the provisional application is prescribed. 
 3.11 Making divisional applications 
 
 (1) For the purposes of subsections 39 (1) and (2) of the Act (“divisional applications”), a 
divisional application must be made unde r section 29 of the Act (“application for 
patent”). 
 
 (2) A divisional application for a patent unde r subsection 39 (1) of the Act must be made 
before the date of the grant of a patent on the first-mentioned application in that 
subsection. 
  (3) A divisional application for a patent unde r subsection 39 (2) of the Act must be made 
before the end of 3 months after the date  of the grant of the petty patent first 
mentioned in that subsection. 
 
3.12 Priority dates generally 
  (1) Subject to regulations 3.13 (“priority dates: certain persons and applications”) 
and 3.14 (“priority dates: certain amended cl aims”) and subregulation (2), the priority 
date of a claim of a specification is the earliest of the following dates: 
   (a) the date of filing of the specification;  IP/N/1/AUS/P/6 
 Page 21 
 
 
                (b) if the claim is fairly  based on matter disclosed in 1 or more priority 
documents, the date of filing the priority document in which the matter was first disclosed; 
  (c) if:  
                           (i) the specification is a complete specification filed in respect of a 
divisional application; and 
                           (ii) the claim is fairly based on matter disclosed in the specification 
referred to in paragraph 39 (1) (a ) or subsection 39 (2) of the Act 
(“divisional applications”); 
  the date that would have been the prio rity date of the claim if it had been 
included in the last-mentioned specification. 
  (2) For the purposes of paragraph (1) (b):  
              (a) if the application that relates to the specification containing the claim is a 
complete application — a provisional application that is associated with that complete application in accordance with section 38 of the Act (“time for making complete application”) is a priority document; and 
              (b) if the application that relates to the specification containing the claim is a 
Convention application, a document of any of the following kinds is a 
priority document: 
    (i) a basic application that is related to the Convention application;                            (ii) a speci fication, or another document fi led in respect of, and at the 
same time as, a basic application th at is related to that Convention 
application; or 
                          (iii) a specification in respect of a basic application that is related to that 
Convention application, being a speci fication that was filed after the 
basic application was made; 
   (c) if: 
 
                           (i) the app lication that relates to the specification containing the claim is 
a PCT application that, under Article 8 of the PCT, claims the priority of an earlier application; and 
   (ii) that earlier application is: 
 
                                        (A) an application made in Australia not more than 12 months 
before the international filing date of the PCT application; or 
                                        (B) a basic application, made not more than 12 months before the 
international filing date of the PCT application, that is the first application made in a Convention country in respect of 
the invention; or 
                                        (C) a basic application made after a basic application referred to 
in sub-subparagraph (B); 
  that earlier application, and a specification filed in relation to that earlier 
application after it was made, are priority documents. 
 
 (2A) For the purposes of paragraph (1) (b) a nd subregulation (2), “filed” includes filed 
with the Patent Office and filed with a corresponding Office of another country. 
 IP/N/1/AUS/P/6 
Page 22  
 
   (2B) A reference in subregulation (2) to a basic application does not include a basic 
application that has been disregarded by the Commissioner under section 96 of the Act (“withdrawn, abandoned or refused applications”). 
  (3) For the purposes of paragraph (1) (c) (ii), a claim is not fairly based on the 
specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act if, in 
order to comply with paragraph 40 (2) (a ) of the Act (“specifications”), the deposit 
requirements must be satisfied and on the date of making the divisional application: 
               (a) the requirement sp ecified in paragraph 6 (a) of the Act (“deposit 
requirements”) is not satisfied; or 
              (b) the period prescribed in  subregulation 1.5 (1) (“prescribed periods: deposit 
requirements”) has ended and the require ments of paragraph 6 (c) of the Act 
are not satisfied; 
  in relation to the specification referred to  in paragraph 39 (1) (a) or subsection 39 (2) 
of the Act. 
  (4) If a PCT application claims priority from a basic application, a specification or other 
document filed in respect of, and at the same time as, a basic application, section 96 of the Act (“withdrawn, abandoned or refused applications”) is taken to apply to the 
PCT application as if it were a Convention application. 
 
3.13 Priority dates: certain persons and applications 
 
  If, under subsection 36 (1) of the Act (“ot her applications by eligible persons”): 
 
  (a) the Commissioner declares a person to be an eligible person; and 
              (b) the person makes a complete application under section 29 of the Act 
(“application for patent”); 
  the priority date of a claim of the specifi cation in respect of that application, being a 
claim that is fairly based on matter disclosed in the specification referred to in paragraph 36 (1) (b) of the Act and re ferred to in the declaration is: 
              (c) if that specification is a complete specification — the priority date of the 
claim or the date that would have been the priority date of the claim if the 
claim had been a claim of the specification; and 
              (d) if that specification is a provisional specification — the date of filing of the 
specification. 
 
3.14 Priority dates: certain amended claims 
 
 If subsection 114 (1) of the Act (“priority date of certain amended claims”) applies to a claim 
of a specification, the priority date of the claim is: 
 
 (a) in the case of an amendment to which s ubsection 89 (4) or (5) of the Act (“modified 
application of Act”) applies — the date on which the amendment is taken to have 
been made under that subsection; and 
 (b) in any other case — the date of filing of the statement of proposed amendments that 
resulted in the disclosure referred to in subsection 114 (1) of the Act. 
 
3.15 Prescribed period and form of request for examination 
 
 (1) For the purposes of subsection 44 (1) of  the Act (“request for examination”), the 
period of 5 years from the filing date of the complete application is prescribed.  IP/N/1/AUS/P/6 
 Page 23 
 
 
   
 (2) For the purposes of subsection 44 (1) of the Act, a request for an examination of a 
patent request and complete specifica tion must be in the approved form. 
 
3.16 Prescribed grounds and period for examination 
 
 (1) For the purposes of subsection 44 (2) of  the Act (“request for examination”), the 
following grounds are prescribed: 
               (a) that the Commissioner r easonably considers it expedient to give the direction 
having regard to the progress made in th e examination of applications filed 
before the filing date of the application concerned; 
             (b) that the Commissioner reasonably considers it to be in the public interest to 
give the direction; 
             (c) that the Commissioner reas onably considers it expedient to give the direction, 
having regard to the examination of anot her application for a standard patent 
or the consideration of an application for a petty patent. 
  (2) For the purposes of subsection 44 (2) of  the Act, the prescribed period is 6 months 
from the day on which the direction was given. 
 
 (3) A direction must be given in writing and state the grounds on which it is given. 
 
3.17 Requirement for Commissioner to direct or expedite examination 
 
 (1) For the purposes of subsection 44 (3) of the Act (“request for examination”), a person 
may, in the approved form, request the Comm issioner to direct an applicant for a 
standard patent to ask for an examina tion of the patent request and complete 
specification under subsection 44 (2) of the Act. 
  (2) If an applicant has asked for an examin ation of the patent request and complete 
specification to be expedited, the Commissione r may do so if he or she is reasonably 
satisfied that: 
   (a) it is in the public interest; or   (b) there are special circumstances that make it desirable.  3.18 Report of Commissioner: examination 
 
 (1) In reporting for the purposes of paragra ph 45 (1) (b) (“examination”) or 48 (1) (a) 
(“modified examination”) of the Act, th e Commissioner must not have regard to 
information made publicly available only through the doing of an act anywhere in the patent area. 
 
 (2) For the purposes of paragraph 45 (1) (c) or 48 (1) (b) of the Act, the following 
matters are prescribed: 
               (a) whether, to the best of the knowledge of the Commissioner, the request and 
specification comply with the following provisions of the Act: 
    (i) section 15 (“who may be granted a patent?”);    (ii) section 29 (“application for patent”);    (iii) section 38 (“time for making complete application”); IP/N/1/AUS/P/6 
Page 24  
 
     (iv) section 39 (“divisional applications”); 
   (v) section 81 (“grant of patent of addition”);                            (v i) section 94 (“Convention app licants may make Convention 
applications”); 
   (vii) section 95 (“manner of making Convention applications”); 
 
              (c) whether acceptance of the request and specification should be refused under 
section 51 of the Act (“application or gr ant may be refused in certain cases”); 
              (d) whether the inve ntion is not a patentable invention because of 
subsection 18 (2) of the Act (“patentable inventions”); 
              (e) whether a patent cannot be granted on the application because of 
subsection 64 (2) of the Act (“grant: multiple applications”); 
              (f) whether the applicant is en titled to ask that any action be  taken, or that he or 
she be allowed to take any action, because of subsection 89 (3) of the Act (“modified application of Act”). 
 
 (3) For the purposes of paragraph 48 (1) (b) of the Act, the following matters are 
prescribed: 
               (a) in the case of an invention to which section 6 of the Act (“deposit 
requirements”) applies — whether, to the best of the knowledge of the 
Commissioner, the requirements of section 6 of the Act are satisfied; 
              (b) whether the specification under modified examination is the same as the copy 
of the specification (in this regulation called foreign specification ) filed 
under subregulation 3.20 (6) (“requests for deferment of examination or 
modified examination”), apart from: 
 
   (i) matters of form; or    (ii) the omission of a claim that is made in the foreign specification; or                            (iii) an amendment of a claim that is consequential on an omission 
referred to in subparagraph (ii); or 
   (iv) an obvious mistake in the foreign specification; or 
                           (v) if the micro-organism deposited in respect of the foreign 
specification is the same micro-organism as that deposited in respect of the specification, a difference relating to matter referred to in paragraph 6 (c) of the Act that is  necessary for the application to 
comply with the deposit requirements. 
 
 (4) For the purposes of examination, if a notice has been filed under subsection 27 (1) of 
the Act (“notice of matters affecting validi ty of standard patents”), the Commissioner 
must consider a matter stated in the noti ce that addresses a claim that an invention 
does not comply with paragraph 18 (1) (b) of the Act. 
 3.19 Conduct of examination 
 
 (1) If the Commissioner reasonably believes that there are lawful grounds of objection to 
the patent request or complete specificati on, he or she must state the grounds of 
objection in reporting on an examination. 
 
 (2) The applicant may contest the objection in writing or ask for leave to amend the 
patent request or complete specifi cation in accordance with Chapter 10 
(“amendments”). 
  IP/N/1/AUS/P/6 
 Page 25 
 
 
    (3) If the applicant asks for leave to amend a patent request or complete specification in 
response to, or in anticipation of, a repor t under section 45 (“examination”) or section 
48 (“modified examination”) of the Act, the Commissioner must examine the request and specification and report as if each proposed amendment had been made. 
 
 (4) If the applicant contests the objection, the Commissioner must examine the request 
and specification and take note of the matters raised by the applicant. 
 
3.20 Requests for deferment of examination or modified examination 
  (1) In this regulation: 
 
  prescribed foreign country  means a country prescribed in regulation 3.21 
(“prescribed foreign countries: requests for deferment of examination and modified 
examination”). 
 
 (2) For the purposes of paragraph 46 (1) (b) (“ request for deferment of examination”) of 
the Act, the following applications are prescribed: 
   (a) a basic application in relation to the complete application;               (b) an application for a patent  that claims the priority of the complete application 
or a provisional application associated with the complete application under 
section 38 of the Act (“time for making complete application”); 
              (c) an application for a pate nt made in a prescribed foreign country that claims 
the priority of the application that is a basic application in relation to that 
complete application. 
 
 (3) For the purposes of paragraph 47 (1) (b) of the Act (“request for modified 
examination”), an application prescribed for the purposes of paragraph 46 (1) (b) of the Act in relation to which a patent in English has been granted in a prescribed 
foreign country is prescribed. 
 
 (4) For the purposes of paragraph 46 (1) (d) of  the Act, the prescribed ground is that the 
Commissioner reasonably considers it expedient to give the direction, having regard 
to the progress made in the examination of a pplications filed before the filing date of 
the application concerned. 
 
 (5) For the purposes of subsection 46 (2) and subsection 47 (1) of the Act, a request for 
each action must be in the approved form. 
  (6) The applicant must file a copy of the sp ecification relating to the patent referred to in 
paragraph 47 (1) (b) of the Act that is: 
 
              (a) certified by the official chief or head of the Patent Office of the prescribed 
foreign country by which the patent was granted; or 
  (b) otherwise verified to the reasonable satisfaction of the Commissioner;   before acceptance, unless the applicant ma kes a request under subsection 47 (2) of the 
Act. 
 IP/N/1/AUS/P/6 
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  3.21 Prescribed foreign countries: requests for deferment of examination and modified 
examination 
 
 For the purposes of paragraphs 46 (1) (b) (“request for deferment of examination”) 
and 47 (1) (b) of the Act (“request for modifi ed examination”), the following countries are 
prescribed: 
               (a) a country that is a signatory to the treaty done at Munich on 5 October 1973 
entitled the Convention on the Grant of European Patents, as in force from time to time; 
  (b) Canada; 
  (c) New Zealand (excluding the Cook Islands, Niue and Tokelau); 
              (d) United States of America (including all territories and possessions and the 
Commonwealth of Puerto Rico). 
 3.22 Consideration of petty patent application 
 
 (1) In considering the complete applicati on for a petty patent under subsection 50 (1) of 
the Act (“consideration and acceptance of  patent request: petty patent”), the 
Commissioner must: 
 
              (a) not have regard to information made publicly available only through the 
doing of an act anywhere in the patent area; and 
  (b) have regard to:                             (i) the matters prescribed in paragraphs 3.18 (2) (a) to (f) (inclusive) 
(“report of Commissioner: examination”); and 
   (ii) whether the abstract is finally completed; and                            (iii) whether, to the best of the knowledge of the Commissioner, the 
invention, so far as claimed in an y claim, satisfies paragraphs 18 (1) 
(a) and (b) of the Act (“pa tentable inventions”); and 
                           (iv) whether the specification complies with section 40 of the Act 
(“specifications”). 
  (2) If the applicant asks for leave to amend a patent request or complete specification in 
response to, or in anticipation of, a notice under paragraph 50 (2) (a) of the Act, the Commissioner must consider the request and specification as if each proposed 
amendment had been made. 
  (3) If the applicant contests the objection, the Commissioner must consider the request 
and specification and take note of the matters raised by the applicant. 
 
Part 2 Inventions that are micro-organisms 
   
3.23 Documents in accepted applications  and patents involving micro-organisms 
 
 (1) Where a micro-organism is deposited w ith a prescribed depositary institution for the 
purposes of section 41 of the Act (“specifications: micro-organisms”), the following 
documents must be filed in relation to an application that has been accepted under 
section 49 (“acceptance of patent request: sta ndard patent”) or 50 (“consideration and 
acceptance of patent request: petty patent”) of the Act or a patent in respect of the micro-organism: 
  IP/N/1/AUS/P/6 
 Page 27 
 
 
                (a) if the deposit is an original deposit within the meaning of Rule 7.3 of the 
Budapest Treaty or a new deposit within the meaning of Rule 7.4 of that Treaty — a copy of a receipt issued by  the institution under Rule 7 of the 
Treaty; 
              (b) if samples of the micr o-organism were transferre d to that institution under 
Rule 5.1 (a) (i) of the Treaty — a copy of a receipt issued by the institution 
under Rule 7 of the Treaty; 
              (c) if a receipt referred to in  paragraph (a) or (b) is not in English — a translation 
of the receipt into English and a related certificate of verification. 
 
 (2) The documents referred to in subregula tion (1) must be filed within 3 months from 
the date of receipt of the micro-organism by the prescribed depositary institution. 
 
3.24 Commissioner may request samples and viability statement 
  (1) If, in relation to a patent application or  patent in respect of a micro-organism, the 
micro-organism is deposited with a pr escribed depositary institution, the 
Commissioner: 
   (a) on the order of a court in Australia, must; or   (b) on his or her own motion or on appli cation in writing by another person, may; 
  for the purposes of proceedings before  the Commissioner or any other legal 
proceedings in Australia: 
              (c) make to that institution a request referred to in Rule 11.1 of the Budapest 
Treaty for a sample of that micro-organism; and 
             (d) in relation to that micr o-organism, make the declaration referred to in that 
Rule. 
  (2) Before making a request, the Commissi oner must give the applicant or patentee 
concerned, and any other pers on who apparently has an interest in the request, an 
opportunity to be heard, unless the request is made on the order of a court. 
 
 (3) If the Commissioner decides to make, or to  refuse to make, a request, he or she must 
inform the applicant or patentee concerned,  and any other person who apparently has 
an interest in the request, of the decision,  and of the reasons for the decision, by 
notice in writing as soon as practicable after the decision. 
 
 (4) The Commissioner may make a request referred to in Rule 10.2 (a) (iii) of the 
Budapest Treaty for a statement concerning the viability of a micro-organism if a sample of the micro-organism has been given to the Commissioner in accordance with a request under subregulation (1). 
 
3.25 Request for Commissioner’s certificate au thorising release of sample of a micro-
organism 
 
 (1) If a micro-organism is deposited with a prescribed depositary institution, a person 
may, in the approved form, request the Commissioner to grant the certification referred to in Rule 11.3 (a) of the Budapest Treaty in respect of the deposit. 
 
 (2) As soon as practicable after receivi ng a request, the Commi ssioner must decide 
whether to: 
   (a) comply with the request; or IP/N/1/AUS/P/6 
Page 28  
 
                (b) impose such conditions as are reasonable, including a condition that the 
person give security for damages for any breach of the undertaking referred 
to in paragraph (4) (c) given by: 
    (i) the person; or 
   (ii) another person who has been nominated as a skilled addressee; or 
   (c) refuse that request.   (3) The applicant for the patent may, at an y time before the specification relating to the 
application is open for public inspection, notify the Commissioner that a sample of 
the deposited micro-organism is  only to be provided before: 
   (a) the patent is granted on that application; or   (b) the application has lapsed  or been withdrawn or refused; 
  to a person who is: 
  (c) a skilled addressee without an interest in the invention; and   (d) nominated by the person who made the request.   (4) The Commissioner must comply with a requ est in respect of a patent application or 
patent: 
 
              (a) if the specification rela ting to that application or patent is open to public 
inspection; and 
              (b) unless the Commissioner is reasonably satisfied that the nominated person is 
not entitled to rely on the deposit for the purposes of the Act; and 
              (c) if the person maki ng the request or the person nominated as a skilled 
addressee has undertaken to use that micro-organism only for experimental purposes or in relation to: 
                            (i) opposition proceedings under Chapter 5 of the Act (“opposition”) in 
relation to the grant of a standard  patent on that application; or 
                           (ii) a no tice under section 28 of the Act (“notice of matters affecting 
validity of petty patents”) in re lation to the petty patent; or 
   (iii) relevant proceedings in relation to the patent;   and not to make that micro-organism, or a culture derived from that micro-
organism, available to another person; and 
 
              (d) unless the Commissioner is reasonably satisfied that the undertaking given by 
the person making the request or the person nominated as a skilled addressee was not given in good faith; and 
  (e) if:  
   (i) the Commissioner has been notified under subregulation (3); and 
   (ii) the patent referred to in that  subregulation has not been granted; and 
                           (iii) the a pplication referred to in that s ubregulation has not lapsed or 
been withdrawn or refused; and 
                           (iv) the Commissioner is reasonably satisfied that the person nominated 
as a skilled addressee is a skilled addres see without an interest in the 
invention; and 
              (f) if:     (i) the request is in respect of a patent; and  IP/N/1/AUS/P/6 
 Page 29 
 
 
                             (ii) the person making that request is a person to whom the patentee has 
granted a licence under section 133 of the Act (“compulsory licences”); and 
                           (iii) the Commissioner is reasonably satisfied that the licence provides 
that the person making the request h as a right to obtain a sample of 
that micro-organism; and 
   (g) if:     (i) the request is in respect of a patent; and 
                           (ii) th e person making that request is  a person who may exploit the 
invention under section 163 of the Act (“exploitation of inventions 
by Crown”); and 
                           (iii) the Commissioner is reasonably satisfied that the terms for the 
exploitation of the invention provide that the person making the 
request has a right to obtain a sample of that micro-organism. 
  (5) Before making a decision under subregula tion (2), the Commissioner must give the 
person making the request, the applicant or  patentee concerned and any other person 
who apparently has an interest in the request, an opportunity to be heard. 
 
 (6) If the Commissioner makes a decision under subregulation (2), he or she must inform 
the person who made the request, the appli cant or patentee concerned and any other 
person who apparently has an interest in th e request, of the decision, and the reasons 
for the decision, by notice in writing given as soon as practicable after the date of the 
decision. 
 
3.26 Breach of undertakings given in respect of micro-organisms 
 
 (1) Where the micro-organism is deposited with a prescribed depositary institution, 
proceedings for breach of an undertaking referred to in paragraph 3.25 (4) (c) 
(“request for Commissioner’s certificate authorising release of sample of a micro-
organism”) may be instituted in a prescribed court by a person who is: 
   (a) if a patent has not been granted on that patent application — the applicant; or   (b) if:  
   (i) a patent has been granted on that patent application; or 
   (ii) the deposit is effected in relation to a patent;    the patentee of, or an exclusive licensee under, that patent.   (2) In proceedings by an exclusive licen see, the patentee must be a party to the 
proceedings. 
 
 (3) A patentee joined as a defendant in the proceedings by an exclusive licensee is not 
liable for costs unless the patentee enters an appearance and takes part in the proceedings. 
 
 (4) It is a defence in proceedings for bre ach of the undertaking given in respect of a 
micro-organism to which a specification filed in respect of a patent application or patent relates, that when the matters complained of took place the specification did not comply with the requirements referred to in paragraph 6 (c) or (d) of the Act 
(“deposit requirements”). IP/N/1/AUS/P/6 
Page 30  
 
   
 (5) A defendant may not plead a defence referred to in subregulation (4) unless: 
               (a) the defendant, before becoming a defendant in the proceedings, notified the 
Commissioner under paragraph 3.29 (1) (“notification that a deposit 
requirement has ceased to be satisfied”) of the deposit requirement that has 
ceased to be satisfied; and 
              (b) the applicant for the patent  or the patentee fails to take the steps referred to in 
paragraph 41 (4) (b) of the Act (“spec ifications: micro-organisms”) within 
the appropriate period prescribed by subregulation 3.30 (1) (“prescribed 
period: deposit requirements taken to be  satisfied”) for the purposes of that 
paragraph. 
3.27 Procedure in proceedings for breach of an undertaking 
 
 In proceedings referred to in subregulation 3. 26 (1) (“breach of undertakings given in respect 
of micro-organisms”) for breach of an undertaking: 
   (a) the plaintiff must deliver particulars of the breaches complained of:     (i) with the statement of claim or declaration; or    (ii) by order of the court, at a later time; and 
 
              (b) the defendant must deliver particulars of any objections on which the 
defendant relies: 
    (i) with the statement of defence or plea; or 
   (ii) by order of the court, at a later time. 
 
3.28 Relief in proceedings for breach of undertakings 
 
 (1) In proceedings referred to in subregula tion 3.26 (1) (“breach of undertakings given in 
respect of micro-organisms”), the court may: 
 
  (a) make an order for inspection; and   (b) impose terms and give directions with respect to the inspection.   (2) In proceedings referred to in subregulat ion 3.26 (1), the court may grant such relief as 
it thinks fit, including: 
   (a) an injunction on such terms as it thinks fit; or   (b) an order for damages; or   (c) an order for an account of profits; or               (d) an order with respect to any security given under paragraph 3.25 (2) (b) 
(“request for Commissioner’s certificate authorising release of sample of a 
micro-organism”); or 
              (e) an order on such terms as it thinks fit to deliver to such person as it thinks fit 
the micro-organism or any substance or thing derived directly or indirectly 
from that micro-organism as a result of the breach of the undertaking, 
including: 
    (i) any products made by using that micro-organism; and    (ii) any other micro-organisms derived from that micro-organism; and 
   (iii) any products made by using those other micro-organisms.  IP/N/1/AUS/P/6 
 Page 31 
 
 
   
3.29 Notification that a deposit re quirement has ceased to be satisfied 
 
 (1) If a deposit requirement ceases to be satisfied in relation to a micro-organism to 
which a specification filed in respect of a pate nt application or patent relates, a person 
other than the applicant or patentee may,  after the specification has become open to 
public inspection, notify the Commissioner in  the approved form of the requirement 
referred to in paragraph 6 (c) or (d) of the Act (“deposit requirements”) that has 
ceased to be satisfied. 
 
 (2) As soon as practicable after receiv ing a notice under subregulation (1), the 
Commissioner must give a copy of the notice to the applicant or patentee. 
  (3) If the Commissioner learns, otherwise than by a notice referred to in 
subregulation (1), of facts that may establish that a requirement referred to in that 
subregulation has ceased to be satisfi ed, the Commissioner must cause a notice 
setting out those facts to be given to the applicant or patentee. 
  (4) As soon as practicable after the Commissioner receives a notice under 
subregulation (1) or gives a notice under subregulation (3), a notice of the receipt or giving of that notification must be published in the Official Journal . 
 
 (5) The terms of a notice under subregulation (1) or (3) need not be published, but the 
notice must be open to public inspection. 
  (6) The applicant or patentee may file a written reply setting out the facts relied upon to 
establish that the requirement referred to  in subregulation (1) is satisfied. 
  (7) If a reply filed under subregulation (6 ) is in answer to a notification under 
subregulation (1) by a person, the Commissioner must, as soon as practicable after receiving the reply, give a copy of the reply to that person. 
 
 (8) As soon as practicable after a reply is filed under subregulation (6), a notice of the 
filing must be published in the Official Journal . 
  (9) The terms of a reply filed under subregula tion (6) need not be published, but the reply 
must be open to public inspection. 
 
3.30 Prescribed period: deposit requirements taken to be satisfied 
 
 For the purposes of paragraph 41 (4) (b) of th e Act (“specifications: micro-organisms”), if, in 
relation to a patent application or patent relating to a micro-organism: 
 
  (a) that micro-organism is deposited w ith a prescribed depositary institution; and 
              (b) a requirement referred to in paragraph 6 (c) or (d) of the Act (“deposit 
requirements”) ceases to be satisfied in relation to the micro-organism; 
  the prescribed period is from the day when the requirement ceases to be so satisfied to 
the end of: 
              (c) where the step referred to  in paragraph 41 (4) (b) of the Act is the making of 
a new deposit of a sample of the micro-organism: 
                             (i) if the Commissioner has given under subregulation 3.29 (2) 
(“notification that a deposit requirement has ceased to be satisfied”) IP/N/1/AUS/P/6 
Page 32  
 
  the applicant or patentee a copy of a notice of that requirement — the 
period of 3 months after the copy was given; or 
                           (ii) if the Commissioner has given under subregulation 3.29 (3) to the 
applicant or patentee a notice of the requirement — the period of 3 months after the notice was given; or 
                           (iii) if under Article 4 (1) of the Budapest Treaty the authority has 
notified the depositor of its inability to furnish samples of the micro-organism and the Commissioner has not, before the notification, given to the applicant or patentee under subregulation 3.29 (2) or (3) a copy of the notice, or the no tice, as the case may be, of the 
requirement — the period of 3 months after the depositor received 
that notification under Article 4 (1) (d) of the Treaty; or 
   (iv) in any other case — the day wh en that new deposit is so made; or 
               (d) where the step referred to  in paragraph 41 (4) (b) of the Act is an amendment 
of the specification in respect of that pa tent application or patent — the date 
of the allowance of the amendment, unless: 
                            (i) the Commissioner has given the applicant or patentee a copy of a 
notice under subregulation 3.29 (2) or a notice under subregulation 3.29 (3), and the applicant or pa tentee has not asked for leave to 
amend the specification within the pe riod of 3 months after the copy 
or the notice was given; or 
                           (ii) the authority has notified the depositor under Article 4 (1) of the 
Budapest Treaty of its inability to furnish samples of the micro-organism and: 
 
                                        (A) the Commissioner has not, before the notification, given to 
the applicant or patentee under subregulation 3.29 (2) or (3) the notice, or a copy of the notice, as the case may be, of the 
requirement; and 
                                        (B) the applicant or patentee has not asked for leave to amend the 
specification within the period of 3 months after the 
depositor received the notification under Article 4 (1) (d) of the Treaty. 
 
3.31 Application for declaration that deposit requirements are not satisfied 
 
 (1) An application under section 42 of the Act (“micro-organisms ceasing to be 
reasonably available”) for a declaration that a specification does not comply with section 40 of the Act (“specifications”) unless the deposit requirements are satisfied in relation to a micro-organism, must: 
 
  (a) be made in the approved form to a prescribed court or the Commissioner; and 
  (b) be lodged at the court or filed.   (2) A person who applies for a declaration under section 42 of the Act must give a copy 
of the application: 
 
  (a) to the applicant or patentee; and   (b) to such other person as the court or Commissioner directs.   IP/N/1/AUS/P/6 
 Page 33 
 
 
   (3) If the Commissioner on his or her own motion proposes to declare under section 42 of 
the Act that the specification in respect of  a patent application or patent does not 
comply with the requirements of section 40 of the Act unless the deposit requirements are satisfied in relation to a micro-organism, he or she must give to the applicant or patentee a statement of the facts relied upon to  justify the making of that declaration. 
 
 (4) A person to whom:    (a) a copy of an applicati on under subregulation (2); or 
  (b) a statement under subregulation (3); 
  has been given: 
              (c) may, within 3 months, give  to the court to which the application is made or to 
the Commissioner a reply to that application or statement; and 
              (d) must give a copy of the reply to the applicant or patentee and to such other 
persons as the court or the Commissioner directs. 
 
 (5) As soon as practicable after:                (a) a copy of a declarati on by a court under subsection 42 (1) of the Act is given 
to the Commissioner under subsection 42 (6) of the Act; or 
              (b) the making of a decision of the Commissioner under subsection 42 (1) of the 
Act; 
  notice of the making of the declaration or decision must be published in the Official 
Journal . 
  (6) The terms of a declaration or decision re ferred to in subregulation (5) need not be 
published, but the declaration or decision must be open to public inspection.  
 
Chapter 4 Publication 
    4.1 Prescribed information: applicants and applications 
  For the purposes of section 53 of the Act (“publi cation of certain information about applicants 
etc.”), the following information is prescribed: 
   (a) the number allocated to the application by the Commissioner; 
  (b) the name of the applicant; 
  (c) in the case of a complete application — the name of the nominated person; 
  (d) the title, or an abbrev iated title, of the invention; 
  (e) the date on which the application was filed;               (f) in the case of a complete application, other than a PCT application — 
particulars of priority documents. 
 4.2 Notice that specification is open to public inspection 
 
 (1) A request under subsection 54 (1) of the Ac t (“notice of publication”) must be in the 
approved form. 
 
 (2) For the purposes of subsection 54 (1) of  the Act, the Commissioner must publish the 
notice as soon as practicable after: 
   (a) being asked by the applicant to publish the notice; and   (b) the relevant abstract is finally completed; and IP/N/1/AUS/P/6 
Page 34  
 
                (c) if a direction has been given under subregulation 3.2 (4) (“specifications”) — 
the direction has been complied with. 
  (3) For the purposes of paragraph 54 (3) (b) of the Act, the prescribed period is from the 
day of filing of the specification to the end of 18 months after: 
 
  (a) that day; or               (b) the date of making the earliest priority document referred to in regulation 
3.12 (“priority dates generally”); 
  whichever is earlier. 
 
4.3 Prescribed documents: public inspection 
 
 (1) For the purposes of subsection 55 (1) of the Act (“documents open to public 
inspection”), the following documents, in cluding those documents as amended, are 
prescribed: 
   (a) the patent request;               (b) any document filed, including a specification, in relation to any provisional 
application associated with the complete application; 
              (c) any basic document that has been filed and, if the document is not in English, 
a translation of the document into E nglish and a related certificate of 
verification; 
              (d) any documents filed under section 6 (“deposit requirements”), section 41 
(“specifications: micro-organisms”) or section 42 (“micro-organisms ceasing to be reasonably available”) of the Act; 
               (e) a notice and a statem ent filed under subregulati on 2.2 (3) (“publication or 
use: prescribed circumstances and periods”); 
               (f) a document prescribed  in regulation 3.1 (“prescribed documents: patent 
applications”); 
               (g) a notification under subregulation 3.25 (3) (“request for Commissioner’s 
certificate authorising release of sample of a micro-organism”); 
               (h) any document filed, and a copy of any document given to the patent applicant 
by the Commissioner, in relation to an application for an extension of time under subsection 223 (2) of the Act. 
  (2)  For paragraphs 55 (2) (a), (b) and (c) of the Act, the following documents are 
prescribed: 
               (a) a document that is subject  to an order of a court or a tribunal that prohibits 
disclosure of the document or information in the document; 
              (b) a document required to be  produced under paragraph 210 (c) of the Act, if the 
Commissioner has reasonable grounds for believing that the document or 
information in the document should no t be open to public inspection; 
              (c) a document that contains information from a document to which 
paragraph (b) applies. 
 
Chapter 5 Opposition 
   
5.1 Application of this Chapter 
 
 This Chapter applies if a notice of op position has been filed for the purposes of: 
  IP/N/1/AUS/P/6 
 Page 35 
 
 
   (a) the following provisions of the Act: 
   (i) section 59 (“opposition to grant of standard patent”);   (ii) section 75 (opposition to grant of extension);               (iii) subsection 104 (4) (“amendments by applicants and patentees”), unless the 
request for leave to amend is in response to a direction of the Commissioner 
under section 107 (“amendments directed by Commissioner: patent applications”) or 108 (“amendments dir ected by Commissioner: extensions of 
term of petty patents”); 
  (iv) subsection 223 (6) (“extensions of time”); or 
 
 (b) subregulation 22.21 (4) (“protection or co mpensation of certain persons”) or 10.7 (4) 
(“correction of Register or patent”). 
 
5.2 Interpretation 
 
 In this Chapter: 
 
 applicant  means a person who has filed an applicatio n or request in respect of which another 
person has filed a notice of opposition. 
 
 opponent  means a person who has filed a notice of opposition. 
 
 party  means applicant or opponent. 
 
5.3 Filing of opposition 
 
 (1) The Minister or other person who inte nds to oppose the grant of a patent under 
section 59 of the Act (“opposition to grant of standard patent”) must file a notice of 
opposition in the approved form within 3 months of publication in the Official 
Journal of the notice of acceptance under section 49 of the Act (“acceptance of patent 
request: standard patent”). 
 
 (2) The Minister or other person who intends to oppose the grant of an extension of the 
term of a standard patent under secti on 75 of the Act (opposition to grant of 
extension) must file a notice of opposition in  the approved form within 3 months of 
publication in the Official Journal  of the notice of acceptance under section 74 of the 
Act (acceptance or refusal of application). 
  (3) The Minister or other person who intends to oppose allowing an amendment under 
subsection 104 (4) of the Act (“amendments by applicants and patentees”) must file a 
notice of opposition in the approved form w ithin 3 months of publication in the 
Official Journal of a notice referred to in subregulation 10.5 (2) (“Commissioner to 
grant leave to amend”). 
  (4) A person must not oppose the allowance of a proposed amendment of a complete 
specification, except on the grounds that the amendment is not allowable under section 102 of the Act (“what amendments are not allowable?”). 
 
 (5) A person who intends to oppose the grant of  an application for an extension of time 
under subsection 223 (6) of the Act (“extens ions of time”) must file a notice of 
opposition in the approved form within 1 month of the advertisement of the application in the Official Journal . IP/N/1/AUS/P/6 
Page 36  
 
   
 (5A) A person who intends to oppose a request for amendment of the Register or a patent 
under subregulation 10.7 (4) (“correction of Register or patent”) must file a notice of opposition in the approved form within 3 months of the publication in the Official 
Journal of the notice referred to in subregulation 10.7 (3). 
 
 (6) A person:                (a) on whom a copy of an application for a licence in accordance with 
subregulation 22.21 (3) (“protection or compensation of certain persons”) has 
been served; and 
              (b) who intends to oppose the grant of the licence;   must file a notice of opposition to the grant of the licence in the approved form 
within 1 month from the day on which the copy was served on him or her. 
 
 (7) As soon as practicable after a notice of opposition is filed, the opponent must serve a 
copy of the notice on the applicant. 
 
5.3A Amendment of notice of opposition 
 
 (1) An opponent may request the Commissioner in writing to amend a notice of 
opposition for the purpose of correcting a clerical error or obvious mistake. 
  (2) The Commissioner may grant the request on the terms (if any) that the Commissioner 
specifies by notice to the opponent making the request. 
 
 (3) The Commissioner must give the parties an opportunity to make representations 
concerning the proposed amendment. 
  (4) If the Commissioner allows an amendment, he or she must give the applicant a copy 
of the notice as amended. 
 5.4 Filing of statement 
 
 (1) An opponent must:                (a) within 3 months of filing the notice of opposition serve on the applicant a 
copy of a statement that sets out: 
    (i) the grounds of opposition; and    (ii) the particulars relating to each ground; and                (b) as soon as practicable afte r the copy of the statement has been served on the 
applicant, file the statement. 
 
5.5 Dismissal of opposition 
 
 (1) An applicant may: 
 
              (a) within 1 month of be ing served with a copy of a statement by an opponent 
under subregulation 5.4 (1) (“ filing of statement”); or 
              (b) if the complete specifi cation in relation to an opposed application is re-
examined under subsection 97 (1) of the Act (“re-examination of complete  IP/N/1/AUS/P/6 
 Page 37 
 
 
  specifications) — within 1 month from the day when the re-examination is 
completed under regulation 9.5 (“co mpletion of re-examination”); 
  request the Commissioner in the approved form to dismiss the opposition.   (2) As soon as practicable after a request is made, the Commissioner must inform the 
opponent of the request having been made. 
  (3) The Commissioner may dismiss the opposition whether or not the applicant has 
requested dismissal of the opposition. 
 5.6 Determination of opposition 
 
 (1) If the complete specification in relati on to an opposed application is re-examined 
under subsection 97 (1) of the Act (“re-exami nation of complete specifications”), the 
opponent may, within 1 month from the day when the re-examination is completed 
under regulation 9.5 (“completion of re-exa mination”), request the Commissioner in 
the approved form to determine the opposition. 
  (2) As soon as practicable after a request is made, the Commissioner must inform the 
applicant of the request having been made. 
 
 (3) The Commissioner may determine the opposition whether or not the opponent has 
requested determinati on of the opposition. 
 
5.7 Opponent to serve copy of substitute statement 
  If the specification in relation to the opposed application is re-examined under 
subsection 97 (1) of the Act (“re-exa mination of complete specifications”): 
  (a) the opponent may, within 1 month from the day when the re-examination is 
completed under regulation 9.5 (“completi on of re-examination”), serve on the 
applicant a copy of a statement in substitution for the statement to which 
subregulation 5.4 (1) (“filing of statement”) relates; and 
 (b) if a copy of a substituted statement is se rved on the applicant, the opponent must, as 
soon as practicable after the copy of the st atement has been so served, file that 
statement. 
 5.8 Time for giving of evidence 
 
 (1) If an opponent intends to rely on evidence in support of the opposition, the opponent 
must: 
               (a) serve on the applicant a copy of any evidence in support of the opposition 
within: 
    (i) 3 months of serving the applicant with:                                           (A) a copy of the statement referred to in subregulation 5.4 (1) 
(“filing of statement”); or 
                                         (B) if a substitute statem ent has been served on the applicant 
under regulation 5.7 (“opponent to serve copy of substitute 
statement”) — a copy of that statement; or IP/N/1/AUS/P/6 
Page 38  
 
                            (ii) if the Commissioner has re-examined the complete specification in 
relation to the opposed application under subsection 97 (1) of the Act 
(“re-examination of complete specifications”) — 3 months from the day when re-examination is completed under regulation 9.5 
(“completion of re-examination”); or 
                           (iii) if dismissal of the opposition has been  requested under subregulation 
5.5 (1) (“dismissal of opposition”) — 3 months of a decision of the Commissioner not to dismiss the opposition; or 
                           (iv) if determination of the opposition has been requested under 
subregulation 5.6 (1) (“determina tion of opposition”) — 3 months of 
a decision of the Commissioner not to determine the opposition; 
   whichever happens last; and                (b) file the evidence in support of the opposition as soon as practicable after the 
copy of the evidence has b een served on the applicant. 
 
 (2) Subject to subregulation (3), if an appl icant intends to rely on evidence in answer to 
the evidence in support of the opposition, the applicant must: 
               (a) serve on the opponent a copy of any evidence in an swer to the evidence in 
support of the opposition referred to in s ubregulation 5.4 (2) or paragraph (1) 
(a) within 3 months after being served with that evidence in support of the 
opposition; and 
              (b) file the evidence in answer as soon as practicable after the copy of the 
evidence has been served on the opponent. 
 
 (3) If an opponent has not served on an app licant a copy of evidence in support of the 
opposition and the applicant intends to rely  on evidence in answer to the opposition, 
the applicant must: 
               (a) serve on the opponent a copy of any evidence in answer to the opposition 
within 3 months of the end of the peri od prescribed in paragraph (1) (a); and 
              (b) file the evidence in answer as soon as practicable after the copy of the 
evidence has been served on the opponent. 
  (4) If an opponent intends to rely on evid ence in reply to the evidence referred to in 
paragraph (2) (a) or (3) (a), the opponent must: 
 
              (a) within 1 month of being served with a copy of the evidence under 
paragraph (2) (a) or (3) (a), serve on the applicant: 
    (i) a copy of the evidence in reply; or                            (ii) if the opponent does not serve on the applicant a copy of the evidence 
in reply — a copy of a notice of in tention to serve evidence in reply; 
and 
               (b) if the opponent serves on th e applicant a copy of a notice of intention to serve 
evidence in reply — serve on the applican t a copy of that evidence within 3 
months of being served with a copy of the evidence under paragraph (2) (a) 
or (3) (a); and 
              (c) file the evidence in reply and any notice of intention as soon as practicable 
after the copy of the evidence in re ply or notice has been served on the 
applicant.  IP/N/1/AUS/P/6 
 Page 39 
 
 
  5.9 Amendment of statement 
 
 (1) Subject to subregulation (2), the Co mmissioner, on the written request of an opponent 
and subject to such terms as the Commissioner may specify: 
 
              (a) if the Commissioner reasonably believes that an amendment of a statement 
referred to in subregulation 5.4 (1) (“f iling of statement”) corrects an error or 
omission by the opponent or by his or her agent — may amend the grounds of opposition set out in the statement; or 
              (b) if the Commissioner reasonably believes that an amendment of the grounds 
set out in a statement that is served and filed under subregulation 5.4 (1) 
results from an amendment of a patent request or complete specification — must amend those grounds; or 
              (c) must amend particulars relating to a ground set out in a statement that is 
served and filed under s ubregulation 5.4 (1). 
 
 (2) The Commissioner must not allow an am endment requested under subregulation (1), 
if: 
   (a) an application for dismissal of opposition is being considered; or 
  (b) an application for determinati on of opposition is being considered; or 
              (c) in the case of oppositi on under section 59 of the Act (“opposition to grant of 
standard patent”) — a specification relating to the opposed application is being re-examined; or 
              (d) he or she does not reasonably believe that the applicant has been notified of 
the proposed amendment. 
 
 (3) The Commissioner must give the parties an opportunity to make representations 
concerning the proposed amendment. 
  (4) If the Commissioner allows an amendment, he or she must give the applicant a copy 
of the statement as amended. 
 
5.10 Conduct of proceedings to which this Chapter applies 
 
 (1) The Commissioner may, on his or her own motion or on the application of a party:  
              (a) give a direction that is  not inconsistent with the Act or these regulations for 
the conduct of proceedings to which this Chapter applies; or 
              (b) determine that a period prescribed in this Chapter (except in regulation 5.3 
(“filing of opposition”) or paragraph 5.4 (1 ) (a) (“filing of statement”)), is to 
be extended by such further period as the Commissioner reasonably allows. 
 
 (2) The Commissioner may: 
   (a) on the application of a party in the approved form; and   (b) on such reasonable terms (if any) as the Commissioner specifies; and   (c) after the party has served the application on the other party; 
  extend the time within which the party may ta ke a step prescribed in this Chapter, not 
being a step that is taken under regul ation 5.3 or paragraph 5.4 (1) (a). 
  (3) If section 107 of the Act (“amendmen ts directed by Commissioner: patent 
applications”) applies to an opposed appli cation, the time within which a party may IP/N/1/AUS/P/6 
Page 40  
 
  take a step prescribed in this Chapter is extended by a period that is equal to the 
period from the day when the applicant is given an opportunity to be heard that is referred to in subsection 107 (2) of the Act to  the end of the day when the decision is 
made under 107 (4) of the Act whether or not the amendment is allowed. 
 
 (4) The Commissioner may: 
   (a) on the application of a party; and   (b) on such reasonable terms (if any) as the Commissioner specifies;   permit the party to serve further evidence on the other party. 
 
 (5) The Commissioner must not give a direction under subregulation (1) or grant an 
application under subr egulation (2) or (4) unless the Commissioner: 
               (a) if he or she proposes to grant an application by a party — is reasonably 
satisfied that the other party has been notified of the application; and 
              (b) if he or she proposes to act on his or her own motion — ensures that the 
parties are notified of the proposed action; and 
  (c) in either case:                             (i) giv es the parties a reasonable opportuni ty to make representations 
concerning the application or proposed action; and 
                           (ii) is reasonably satisfied that a direction, an extension of time or the 
serving of further evidence is appropriate in all the circumstances. 
 
5.11 Commissioner may inform himself or herself 
 
 (1) The Commissioner may inform himself or herself of a fact by reference to a 
document available in the Patent Office. 
  (2) If the Commissioner proposes to refer to a document under subregulation (1), he or 
she must: 
 
  (a) notify the parties accordingly; and   (b) give the parties a copy of, or access to, the document; and 
              (c) give the parties an oppor tunity to give evidence or make representations with 
respect to the fact or document. 
 
 (3) In subregulation (2), document  does not include a document filed under 
regulation 5.4 (“filing of statement”), 5.8 (“time for giving of evidence”) or further evidence referred to in subregulation 5.10 (4 ) (“conduct of proceedings to which this 
Chapter applies”). 
 5.12 Hearing of opposition 
 
 The Commissioner must if he or she receives a request by a party to hold a hearing, or may, 
on his or her own motion: 
 
  (a) give a notice of a hearing into the opposition; and 
  (b) hold the hearing;   if the relevant periods prescribed in re gulation 5.8 (“time for giving of evidence”) 
have ended, unless: 
  (c) the opposition has been dismissed or determined; or  IP/N/1/AUS/P/6 
 Page 41 
 
 
    (d) the notice has been withdrawn. 
 
5.13 Representations to Commissioner 
 
 A representation referred to in subregulation 5.3A (3) (“amendment of notice of opposition”), 
subregulation 5.9 (3) (“amendment of statemen t”), subparagraph 5.10 (5) (c) (i) (“conduct of 
proceedings to which this Chapter applies”)  or paragraph 5.11 (2) (c) (“Commissioner may 
inform himself or herself ”) may be made to the Commissioner in writing or by telephone. 
 
5.14 Commissioner not required to hold hearing 
 
 If the Commissioner reasonably believes that no party wishes to be heard in a matter arising 
under regulation 5.12 (“hearing of opposition”) or 5.13 (“representations to Commissioner”), 
the Commissioner is not required to hold a hearing. 
 5.15 Withdrawal of opposition 
 
 An opponent may at any time withdraw opposition by:    (a) filing a written notice of withdrawal that is signed by him or her; and   (b) serving a copy of the notice on the applicant. 
 
Chapter 6 Grant and term of patents 
 Part 1 Patents generally    
6.1 Publication of notice of grant of standard patent  
 If a standard patent is grante d under section 61 of the Act (“gr ant of standard patent”), the 
Commissioner must publish a notice that the patent has been granted in the Official Journal . 
 
6.2 Prescribed period: grant of standard patent 
 
 (1) For the purposes of subsection 61 (2) of the Act (“grant of standard patent”), the 
prescribed period is from 3 months after publi cation under paragraph 49 (5) (b) of the 
Act (“acceptance of patent request: standard patent”) of the notice of the acceptance of the request and complete specification to: 
 
  (a) 6 months after that publication; or   (b) such later day as:                             (i) in the case of proceedings before a court or the Tribunal — the court 
or Tribunal directs; or 
   (ii) in any other case — the Commissioner reasonably directs; 
   being satisfied that the grant of the patent should be postponed. 
  (2) A person may request the Commissioner in  the approved form to give a direction 
referred to in subparagraph (1) (b) (ii). 
 
6.3 Date of patent 
 
 (1) For paragraph 65 (b) of the Act (“date of patent”), the date of a patent is as follows: 
 IP/N/1/AUS/P/6 
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                (a) in the case of a patent granted under subsection 33 (1) of the Act 
(“applications by opponents etc.”) — the date of filing of the complete specification in respect of the application of which the grant of a standard patent is opposed; 
              (b) in the case of a petty patent granted under subsection 33 (2) of the Act — the 
date of the patent referred to in  paragraph 33 (2) (b) of the Act; 
              (c) in the case of a patent granted under subsection 34 (2) of the Act 
(“applications by eligible persons aris ing out of court proceedings”) — the 
date of the patent referred to in subsection 34 (1) of the Act; 
              (d) in the case of a patent granted under section 35 of the Act (“applications by 
eligible persons following revocation by  Commissioner”) — the date of the 
revoked patent; 
              (e) in the case of a patent granted as a result of a declaration under section 36 of 
the Act (“other applications by eligible persons”), if the declaration is made in respect of: 
 
                           (i) a complete application — the date that would have been the date of 
the patent if the patent had been  granted on that application; or 
   (ii) a provisional application:                                          (A) the date 12 months after th e date of filing of the provisional 
specification in respect of that application; or 
                                        (B) the date of filing of the complete application referred to in 
subsection 36 (3) of the Act; 
   whichever is earlier;  
              (ea) if, under section 223 of  the Act, the Commissioner has extended the time for 
making, under section 38 of the Act, a complete application associated with a provisional application — the date 12 months after the date of making the 
first provisional application with wh ich the complete application is 
associated; 
              (eb) if, under section 223 of  the Act, the Commissioner has extended the time for 
making, under section 94 of the Act, a C onvention application in relation to a 
basic application — the date 12 months  after the date of making the first 
basic application to which the Convention application relates; 
              (f) for a patent granted on a divisional application made under subsection 39 (1) 
of the Act, the earlier of: 
 
                           (i) the date of the patent of the first-men tioned application referred to in 
subsection 39 (1) of the Act; or 
                           (ii) the date  that would be the date of the patent if a patent had been 
granted on that first-mentioned application; or 
                           (iii) if that first-mentioned application was itself a divisional application 
or was amended to be a divisional application before filing the later 
application — the date that would be the date of the patent if a patent 
had been granted on the divisional application; 
               (g) for a patent granted on a divisional application made under subsection 39 (2) 
of the Act — the date of the first-menti oned petty patent referred to in that 
subsection. 
  (2) However, for paragraphs (1) (f) and (g), if:   IP/N/1/AUS/P/6 
 Page 43 
 
 
                (a) the date of the patent w as recorded in the Register before 1 January 2000; or 
              (b) for a divisional applica tion, the Commissioner determined a different date of 
the patent and told the applicant in writing before 1 January 2000; 
  the date of the patent is that date.  6.4 Form of application for sealing of duplicate of patent 
 
  An application for the sealing of a duplicate of a patent under section 66 of the Act 
(“sealing of duplicate of patent”) must be in the approved form. 
 6.5 Application for extension of term of petty patent 
 
 (1) For the purposes of subsection 69 (1) of the Act (“extension of term of petty patent”), 
an application for an extension of the term of a petty patent must: 
 
  (a) be in the approved form; and 
  (b) be made within 11 months of  the date of sealing of the patent. 
  (2) If a patentee applies for an extension of  the term of a petty patent, the Commissioner 
must publish in the Official Journal a notice stating that the application has been 
made. 
 
6.6 Deciding an application for extension of term of petty patent 
 
 (1) For the purposes of subsection 69 (2) of the Act (“extension of term of petty patent”), 
in deciding an application for an extens ion of the term of a petty patent, the 
Commissioner must consider: 
               (a) any notice under subsection 28 (1) of the Act (“notice of matters affecting 
validity of petty patents”) in re lation to the petty patent; and 
              (b) any matter of whic h the Commissioner has informed the patentee under 
subsection 28 (3) of the Act. 
 
 (2) If the Commissioner is satisfied that a ground mentioned in subsection 28 (1) of the 
Act is made out, the Commissioner may refuse to grant an extension of the term of 
the petty patent. 
 
 (3) If the Commissioner is satisfied that no ground mentioned in subsection 28 (1) of the 
Act is made out, the Commissioner must grant the extension of the term of the petty patent.  
 
Part 2 Extension of pharmaceutical patents 
   
6.7 Definitions  
 In this Part: 
 
 pre-TGA marketing approval  has the same meaning as in section 70 of the Act. 
 
6.8 Information to accompany application 
 
 (1) This regulation applies to an applicati on under section 70 of the Act for an extension 
of the term of a standard patent for a pharmaceutical substance. IP/N/1/AUS/P/6 
Page 44  
 
   
 (2) For paragraph 71 (1) (c) of the Act, the application must be accompanied by 
information showing that goods containi ng, or consisting of, the substance are 
currently included in the Australian Register of Therapeutic Goods. 
 
 (3) The application must also be accompan ied by information identifying the substance, 
as it occurs in those goods, in the same wa y (as far as possible) as the substance is 
identified in the complete specification of the patent. 
 
6.9 Application without pre-TGA marketing approval  
 
 (1) This regulation applies to an applicati on under section 70 of the Act for an extension 
of the term of a standard patent for a pharmaceutical substance for which pre-TGA 
marketing approval has not been given. 
 
 (2) For paragraphs 71 (1) (b) and (c) of the Act, the application must be accompanied by: 
               (a) a certificate under paragr aph 25 (3) (b) or subsection 26 (4) or 26A (9) of the 
Therapeutic Goods Act 1989  stating the date of commencement of the first 
inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, the substance; or 
              (b) if the patentee does not have a certificate mentioned in paragraph (a) — 
information showing the date of commencement of the first inclusion in the Australian Register of Therapeutic Goods of goods that contain, or consist of, 
the substance. 
 
Note    For providing a copy of a certificate mentio ned in paragraph (2) (a), see the definition of 
document  in subsection 71 (1) of the Act. 
 
6.10 Application with pre-TGA marketing approval 
 
 (1) This regulation applies to an applicati on under section 70 of the Act for an extension 
of the term of a standard patent for a pharmaceutical substance for which pre-TGA 
marketing approval has been given. 
 
 (2) For paragraphs 71 (1) (b) and (c) of the Act, the application must be accompanied by:    (a) a written statement by the pers on who gave the approval showing: 
 
   (i) that approval has been given; and 
   (ii) the date of the first approval; or                (b) if the patentee does not have a written statement mentioned in 
paragraph (a) — information showing: 
 
   (i) that approval has been given; and    (ii) the date of the first approval. 
 
Note    For providing a copy of a written statement mentioned in paragraph (2) (a), see the definition of 
document  in subsection 71 (1) of the Act. 
  IP/N/1/AUS/P/6 
 Page 45 
 
 
  6.11 Further information 
 
 (1) This regulation applies if the Commissi oner needs further information to decide 
whether he or she is satisfied that the requi rements set out in sections 70 and 71 of the 
Act are satisfied for an application for an ex tension of the term of a standard patent. 
 
 (2) The Commissioner may give the applican t a notice requesting the further information 
within the period mentioned in the notice. 
  (3) The period must not be shorter than 2 m onths or longer than 6 months beginning on 
the day the notice is issued. 
 
Note    The period for giving the further informati on can be extended — see section 223 of the Act. 
 
 (4) If the applicant does not give the furt her information within that period, the 
Commissioner must decide whether he or she is satisfied that the requirements set out 
in sections 70 and 71 of the Act are satisfied. 
  (5) For subsection 71 (2) of the Act, furt her information given within the period 
mentioned in subregulation (2) is taken to have been filed with the application for 
extension of the term of the standard patent. 
 
Chapter 7 Patents of addition 
    7.1 Form of application for grant of patent of addition etc 
 
 (1) For the purposes of paragraph 81 (1) (c) of the Act (“grant of patent of addition”), an 
application for a further patent must  be made under section 29 of the Act 
(“application for patent”). 
 
 (2) The Commissioner must not grant a patent of addition under subsection 81 (1) of the 
Act unless the date that would be the date of the patent if that patent of addition were 
granted is the same as, or later than, the da te of the patent for the main invention. 
 
7.2 Form of application for revocation of patent and grant of patent of addition instead 
 
 An application under section 82 of the Act (“ revocation of patent and grant of patent of 
addition instead”) must be in the approved form.  
 
Chapter 8 PCT applications and Convention applications  
 
Part 1 PCT applications 
   8.1 International applications taken to be applications under the Act 
 
 (1) In this regulation:  
  priority date , in relation to an international application, has the same meaning as in 
the PCT. 
  (2) Where:  IP/N/1/AUS/P/6 
Page 46  
 
                (a) the receiving Office has declared that an international application that 
specifies Australia as a designated State under Article 4 (1) (ii) of the PCT is 
taken to be withdrawn; or 
              (b) the International Bureau has made a finding under Article 12 (3) of the PCT;   the application is taken to be a PCT app lication as if a declaration or finding had not 
been made, if: 
              (c) the applicant has made a request referred to in Article 25 (1) (a) of the PCT 
within the time limit specified in Rule 51.1 of the PCT; and 
              (d) the Commissioner has recei ved within the time limit specified in Rule 51.3 of 
the PCT: 
 
                           (i) fees prescribed for the purposes of paragraph 89 (3) (b) (“modified 
application of Act”); and 
                           (ii) if the application is not in English — a translation of the application 
into English and a related certificate of verification; and 
 
  (e) the Commissioner reasonably believes that:                             (i) the declaration was the result of an error or omission on the part of 
the receiving Office; or 
                           (ii) the finding was the result of an error or omission on the part of the 
International Bureau. 
  (3) For the purposes of subsection 89 (1) of the Act:                (a) the requirements of s ubsection 29 (4) of the Act (“ application for patent”); 
and 
              (b) subregulation 3.1 (1 ) (“prescribed documents: patent applications”) and 
regulation 3.2 (“specifications”); 
  are prescribed.   (4) The applicant must meet the requirement s of subsection 89 (3) of the Act within the 
period of: 
               (a) if the application is an  application in respect of which Australia has been 
elected under Chapter II of the PCT within  the period specified in Article 39 
of the PCT — 31 months from the priority date of that application; or 
 (b) in any other case — 21 months from the priority date of that application. 
 
8.1A Title of an invention 
 
 (1) A title established by the ISA under rule  37.2 of the PCT for an international 
application is taken to be the title of the specification. 
 
 (2) For subregulation (1), if the established title is in a language other than English, the 
title is taken to be the English translation of the established title. 
 
8.2 Prescribed documents: PCT application 
 
 (1) In this regulation: 
 
  PCT application  includes: 
  IP/N/1/AUS/P/6 
 Page 47 
 
 
    (a) an amendment under Article 19 or 34 of the PCT; or 
  (b) a rectification under Rule 91 of  the regulations annexed to the PCT. 
  (2) For the purposes of paragraph 89 (3) (a) of the Act (“modified application of Act”), 
if: 
 
  (a) a PCT application is not filed in English; and               (b) the PCT application has been published in English under Article 21 of the 
PCT; and 
              (c) a translation of the applic ation into English has not been filed before the date 
of publication under Article 21 of the PCT; 
  the publication under Article 21 of the PCT is taken to be the translation referred to in 
paragraph 89 (3) (a) of the Act and to ha ve been verified in accordance with these 
regulations. 
 
 (3) For the purposes of paragraph 89 (3) (b) of the Act, each of the following documents 
is prescribed: 
   (a) a document setting out an address fo r service of documents in Australia; 
              (b) if a PCT application has not been published under Article 21 of the PCT — a 
copy of the application; 
              (c) if a PCT application is  not filed in English and has not been published in 
English under Article 21 of the PCT — a translation of the application into English together with a related certificate of verification. 
  (4) The Commissioner must not, in relation to  a PCT application that is treated as an 
application under the Act for: 
               (a) a standard patent — give  a direction under section 44 of the Act (“request for 
examination”); or 
              (b) a petty patent — act under section 50 of the Act (“consideration and 
acceptance of patent re quest: petty patent”); 
  unless the applicant has complied with the requirements of subsection 89 (3) of the 
Act. 
  (5) In a PCT application, the applicant is ta ken to be the nominated person in respect of 
the application. 
 
8.3 Modification of Act to apply to PCT applications 
 
 (1) For paragraph 228 (2) (t) of the Act, the Act is modified under this regulation for PCT 
applications that are treated as pa tent applications under the Act. 
 
 (2) Section 141 (“withdrawal of applications”): 
   Omit the section, substitute:   “ 141 Withdrawal of applications 
 “(1) Subject to subsection (2), a patent a pplication is to be treated as having been 
withdrawn if, and only if, the applicant files a written notice of withdrawal signed by the applicant. IP/N/1/AUS/P/6 
Page 48  
 
   “(2) A PCT application is to be treated as having been withdrawn if Article 11 (3) of the 
PCT ceases to have effect in  Australia in relation to the application under Article 24 
(1) (i) of the PCT.”. 
  (3) Subsection 142 (2) (“lapsing of applications”): 
 
  Add at the end:     “; or (f) Article 11 (3) of the PCT ceases to have effect in Australia in relation to the 
application under Article 24 (1) (ii) or (iii) or Article 39 (2) of the PCT.”. 
 
 (4) Section 223 (“extensions of time”):    After subsection (1) insert:  
              “(1A) If, because of an error or omission by the receiving Office or the International 
Bureau, a relevant act that is required to  be done within a certain time is not, 
or cannot be, done within that time, the Commissioner must extend the time 
for doing the act.”. 
 
8.4 Form of request and prescribed documents: PCT applications 
 
 (1) A request under subsection 92 (1) of the Ac t (“notice of publication”) must be in the 
approved form. 
  
 (2) For the purposes of subsection 92 (4) of the Act, the following documents are 
prescribed: 
               (a) the documents specified in paragraphs 4.3 (c), (d) and (e) (“prescribed 
documents: public inspection”); 
              (b) any International S earch Report or Preliminary Examination Report made 
under the PCT and filed; 
              (c) if the PCT applicati on claims priority under Article 8 of the PCT of a 
provisional or complete application — a document referred to in regulation 
4.3, and a specification, in respect of that application.  
 Part 2 Convention applications    8.5 Convention countries 
 
 (1) Each of the countries specified in Schedu le 4 is declared to be a Convention country 
for the purposes of the definition of Convention country  in the Act. 
 
 (2) For the purposes of section 94 of the Act (“Convention applicants may make 
Convention applications”), the period of 12 months from the day on which a basic 
application is first made in a Convention country in respect of the invention is 
prescribed. 
 
8.6 Particulars required for Convention application 
 
 (1) For the purposes of paragraph 95 (2) (a ) of the Act (“manner of making Convention 
application”), the following particulars are prescribed:  IP/N/1/AUS/P/6 
 Page 49 
 
 
   
  (b) the country in which the application was made;               (c) the number allocated to th e application by the official chief or head of the 
Patent Office of the Convention country in which the application was made; 
  (d) the date on which the application was made; 
              (e) if the application is not  the first made in a Convention country in respect of 
the invention — the particulars specified in paragraphs (b) to (d) (inclusive) in respect of that first made application. 
  (2) For subsection 95 (3) of the Act, a copy  of the specification relating to the basic 
application that is certified by the official chief or head of the Patent Office of the 
Convention Country in which the basic appli cation is made must be filed within the 
period from the day on which the application is made to immediately before acceptance. 
 8.7 Form of request in relation to withdr awn, abandoned or refused applications 
 
 A request under section 96 of the Act (“withdraw n, abandoned or refused applications”) must 
be in the approved form.  
 
Chapter 9 Re-examination 
    
9.1 Commissioner may re-examine complete specification when grant opposed 
 
 (1) The Commissioner may, within 1 month of the filing of a statement under 
subregulation 5.4 (1) (“filing of statement” ), decide to re-examine under subsection 
97 (1) of the Act (“re-examination of complete specifications”) a complete 
specification in respect of the application in respect of which the grant of a patent is 
opposed. 
  (2) The Commissioner must notify an applicant and an opponent under Chapter 5 
(“opposition”) of his or her decision to re-examine a complete specification under 
subsection 97 (1) of the Act. 
 
9.2 Request for re-examination of complete specification 
 
 (1) For the purposes of subsection 97 (2) of  the Act (“re-examination of complete 
specifications”), a request for re-examination of a complete specification must be in 
the approved form. 
  (2) A request must:                (a) identify the documents on which an assertion is based that the invention, so 
far as claimed in any claim and when compared with the prior art base as it 
existed immediately before the priority date of that claim: 
    (i) is not novel; and    (ii) does not involve an inventive step; and 
 
  (b) state the relevance of each of those documents.   (3) The request must have with it:  IP/N/1/AUS/P/6 
Page 50  
 
                (a) if the document is not available in the Patent Office — a copy of the 
document; and 
              (b) if the document is not  in English — a translation of the document into 
English and a related certificate of verification; and 
  (c) evidence of the date and place of publication of the document. 
 
 (4) If the request does not:    (a) identify the documents on which the assertion is based; and   (b) state the relevance of each document; and 
  (c) have with it the documents referred to in subregulation (3); 
  the Commissioner may not re-examine the complete specification.   (5) A person who has made a request may,  by filing a notice in writing, amend or 
withdraw the request before the Commi ssioner reports under section 98 of the Act 
(“report on re-examination”). 
  (6) If the person who made the request is not the patentee, the Commissioner must notify 
the patentee of his or her decision to re-examine the complete specification. 
  (7) A patentee or another person who has requested re-examination of the complete 
specification under subsection 97 (2) of the Act must give notice to the Commissioner 
of any relevant proceedings in relation to the patent of which he or she is aware. 
 
9.3 Copy of report on re-examination 
  (1) If a person who asked for the re-examination is not the patentee, a copy of the report 
under section 98 of the Act (“report on re-exa mination”) must be given to the person 
by the Commissioner. 
  (2) The Commissioner must give an oppon ent under Chapter 5 of the Act (“opposition”) 
a copy of the report in respect of a complete specification in relation to the 
application in respect of which the grant of a patent is opposed. 
 
9.4 Prescribed period: statement disputing report by Commissioner 
 
 (1) For the purposes of subsection 99 (1) of the Act (“statement by applicant or 
patentee”), the period of 2 months after th e day on which the Commissioner reports 
under section 98 of the Act (“report on re-examination”) is prescribed. 
  (2) The Commissioner must give a copy of a statement filed under subsection 99 (1) of 
the Act to: 
 
              (a) an opponent under Chapte r 5 of the Act (“opposition”) in respect of the re-
examined complete specification in rela tion to the application in respect of 
which the grant of a patent is opposed; and 
              (b) if the person who ask ed for the re-examination is not the patentee — that 
person. 
 
9.5 Completion of re-examination 
 
 If the Commissioner makes an adverse report on a re-examination under subsection 97 (1) 
or (2) of the Act (“re-examination of complete specifications”) and:  IP/N/1/AUS/P/6 
 Page 51 
 
 
   
              (a) a statement is filed under section 99 of the Act (“statement by applicant or 
patentee”) and: 
                            (i) the Commi ssioner gives the applicant an opportunity to be heard that 
is referred to in subsection 107 (2) of the Act (“amendments directed 
by Commissioner: patent applica tions”) within 3 months from the 
day when the Commissioner reports under section 98 of the Act (“report on re-examination”); or 
                           (ii) th e applicant or patentee asks for leave to amend the complete 
specification to remove any lawful grounds of objection specified in 
a report on re-examination within 3 months from the day referred to 
in subparagraph (i); 
  the re-examination is completed when the decision is made whether or not 
the amendment is allowed; or 
 
              (b) a statement is file d under section 99 of the Act and subparagraphs (a) (i) 
and (ii) do not apply — the re-exami nation is completed 2 months from the 
day when the Commissioner reports under section 98 of the Act; or 
   (c) a statement is not filed under section 99 of the Act and: 
 
                           (i) the Commi ssioner gives the applicant an opportunity to be heard that 
is referred to in subsection 107 (2) of the Act within 2 months from 
the day when the Commissioner reports under section 98 of the Act; or 
                           (ii) th e applicant or patentee asks for leave to amend the complete 
specification to remove any lawful grounds of objection specified in a report on re-examination within 2 months from the day when the Commissioner reports under section 98 of the Act; 
  the re-examination is completed when the decision is made whether or not 
the amendment is allowed; or 
 
              (d) a statement is not file d under section 99 of the Act and subparagraphs (c) (i) 
and (ii) do not apply — the re-examina tion is completed 2 months from the 
day when the commissioner reports under section 98 of the Act.  
 Chapter 10 Amendments    10.1 Form of amendments 
 
 (1) For the purposes of subsection 104 (1) of the Act (“amendments by applicants and 
patentees”), an applicant or a patentee may ask the Commissioner for leave to amend 
a patent request or complete specificati on or another filed document by filing a 
request for leave to amend in the approved form together with a statement of proposed amendments. 
  (1A) If an applicant proposes to amend a patent request, complete specification or other 
filed document: 
   (a) to remove a lawful ground of objection raised:  IP/N/1/AUS/P/6 
Page 52  
 
                             (i) in the case of an application for a standard patent — in an 
examination report; or 
                           (ii) in the case of an application for a petty patent — in a notification 
under subsection 50 (2) of the Act (“consideration and acceptance of 
patent request: petty patent”); or 
 
  (b) in anticipation:                             (i) in the case of an application for a standard patent — of examination 
of the patent request and specification; or 
                           (ii) in the case of an application for a petty patent — of consideration of 
the patent request and complete specification under section 50 of the 
Act; 
   the applicant is taken to have complied with subregulation (1) if a written statement 
of the proposed amendments is filed. 
  (2) If:                (a) a proposed amendment is  to be made by means of substituting 1 page or 
document for another page or document; or 
              (b) the Commissioner requires the applicant or patentee to make a proposed 
amendment by that means; 
  the applicant or patentee must file:               (c) 2 copies of each page or document that is to be substituted for a page of the 
request or document; and 
              (d) 3 copies of each page th at is to be substituted for a page of the complete 
specification; and 
              (e) on 1 of the copies, an indication of the nature and location of the proposed 
amendments. 
  (3) The Commissioner may require an applicant or a patentee to file, within 3 months of 
being asked to do so, a statement of the re asons for the request being made and any 
evidence in support of the request. 
  (4) The Commissioner may, before granting l eave to amend, require a patentee to file 
within 1 month of being asked to do so, a statement that, to the best of his or her 
knowledge, relevant proceedings are not pending in relation to the patent. 
  (5) For the purposes of this Chapter, a statement of proposed amendments may be 
amended by filing a statement of proposed amendments of the first-mentioned statement before allowance of those amendments. 
 10.2 Commissioner to consider and deal with requests for leave to amend 
 
 (1) For the purposes of subsection 104 (2) of the Act (“amendments by applicants and 
patentees”), the Commissioner must report on whether: 
 
              (a) the request for leave to  amend and the statement of proposed amendments do 
not comply with regulation 10.1 (“fo rm of amendments”) and Schedule 3; 
and 
              (b) any proposed amendment of a complete specification is not allowable under 
section 102 of the Act (“what amendments are not allowable?”); and  IP/N/1/AUS/P/6 
 Page 53 
 
 
                (c) the proposed amen dments are not allowable under regulation 10.3 
(“amendments not allowable”) or, if ma de, would not otherwise be allowable 
under the Act or these Regulations. 
 (2) The Commissioner must give a copy of each report made under subregulation (1) to 
the applicant or patentee. 
 
 (3) The applicant or patentee may contest in writing the report or file a statement of 
proposed amendments of the statement referred to in paragraph (1) (a). 
  (4) If a statement of proposed amendments refe rred to in subregulation (3) is filed, the 
Commissioner must report under subregula tion (1) as if the proposed amendments 
had been made. 
  (5) If, under subregulation (3), the applicant or patentee contests the report, the 
Commissioner must report under subregulati on (1) and take notice of the matters 
raised by the applicant or patentee. 
  (6) If:                (a) the grant of a sta ndard patent is opposed under section 59 of the Act 
(“opposition to grant of standard patent”); or 
              (b) a person has given the Commissioner a notice under section 28 of the Act 
(“notice of matters affecting validity of  petty patents”) and the Commissioner 
has not decided the application under section 69 of the Act (“extension of 
term of petty patent”); 
  and the applicant or patentee has request ed leave to amend the patent request or 
complete specification concerned, the Commissioner must: 
              (c) give a copy of the request for leave to amend and the statement of proposed 
amendments to the opponent or person re ferred to in paragraph (b) as soon as 
practicable after the request for leave to amend has been filed; and 
  (d) invite that opponent or person to comment on the request and statement.  
 (7) The opponent or person may file comments  within 21 days, or any longer period up 
to 2 months allowed by the Commissioner, of being given the copy of the request for leave to amend and the statement under paragraph (6) (c). 
  (8) If: 
 
              (a) a person has, under subregulation 3.25 (1) (“request for Commissioner’s 
certificate authorising release of sample of a micro-organism”), requested the Commissioner to grant the certification referred to in that subregulation; and 
              (b) the Commissioner has not  made a decision under subregulation 3.25 (2); and 
              (c) the applicant or patent ee has filed a request for leave to amend the complete 
specification in respect of a matter mentioned in paragraph 6 (c) of the Act 
(“deposit requirements”); 
  the Commissioner must, as soon as practicab le after the request for leave to amend 
has been filed, give a copy of that requ est and the statement of proposed amendments 
to the person referred to in paragraph (a). 
 
 (9) If a request for leave to amend a comp lete specification in respect of a micro-
organism is made for the purpose of includi ng in the specification a matter in respect 
of which a notice has been filed by  a person under subregulation 3.29 (1) 
(“notification that a deposit requirement has ceased to be satisfied”), the IP/N/1/AUS/P/6 
Page 54  
 
  Commissioner must, as soon as practicable after the request for leave to amend has 
been filed, give the person a copy of the request and the statement of proposed amendments. 
 
10.3 Amendments not allowable 
 
 (1) A proposed amendment of a provisional specification is not allowable if it would 
materially alter the meaning or scope of the specification. 
  (2) A proposed amendment of a complete specification is not allowable if: 
 
              (a) it is in respect of a matter mentioned in paragra ph 6 (c) of the Act (“deposit 
requirements”); and 
              (b) after the amendment was made the specification would not include each of 
the matters specified in that paragraph. 
 
 (3) A proposed amendment of a patent request is not allowable if:                (a) the patent request h as been accepted under section 49 (“acceptance of patent 
request: standard patent”) or 50 (“c onsideration and acceptance of patent 
request: petty patent”) of the Act; and 
  (b) it would convert the patent application from: 
                            (i) an app lication for a standard patent to an application for a petty 
patent; or 
                           (ii) an application for a petty patent to an application for a standard 
patent. 
  (4) The Commissioner must not allow a proposed amendment of a complete specification 
if he or she has: 
               (a) under subregulation 10.2 (8 ) or (9) (“Commissioner to consider and deal with 
requests for leave to amend”) given a person a copy of the request for leave 
to amend and the statement of proposed amendments; and 
  (b) not given the person a reasonable opportunity to be heard.  
10.4 Commissioner to refuse request for leave to amend 
 
 The Commissioner must refuse the request for leave to amend, if:   (a) he or she reasonably believes that a propo sed amendment is not allowable, other than 
for the reasons mentioned in subregulation 10.3 (4) (“amendments not allowable”); or 
 (b) the applicant or patentee has not comp lied with a request of the Commissioner under 
subregulation 10.1 (3) (“form of amendments”); or 
 (c) in the case of a proposed amendment of  a complete specification relating to a 
patent — the patentee has not complied with a request of the Commissioner under subregulation 10.1 (4). 
 10.5 Commissioner to grant leave to amend 
 
 (1) The Commissioner must grant leave to amend a patent request, complete 
specification or other filed document: 
  IP/N/1/AUS/P/6 
 Page 55 
 
 
                (a) if the report on the pro posed amendments under subregulation 10.2 (1) is not 
an adverse report; and 
  (b) in the case of amendments that:     (i) are proposed in anticipation of, or in response to: 
 
    (A) a report relating to an examination; or                                         (B) a notice relating to a consideration of a complete application 
for a petty patent under section 50 of the Act (“consideration and acceptance of patent request: petty patent”); and 
 
                           (ii) do no t relate to matters mentioned in paragraph 6 (c) of the Act 
(“deposit requirements”); 
  if the Commissioner reasonably belie ves that the proposed amendments 
would remove all lawful grounds of objection to the patent request and 
complete specification. 
  (2) If the Commissioner grants leave to ame nd, he or she must publish a notice of that 
fact in the Official Journal , where: 
               (a) the patent request and complete specification to which the leave to amend 
relates have been accepted under secti on 49 (“acceptance of patent request: 
standard patent”) or 50 of the Act; and 
  (b) the proposed amendments are in respect of:     (i) the complete specification; or 
                           (ii) the patent request or another filed document and the proposed 
amendments would materially alte r the meaning or scope of the 
request or document. 
  (3) The Minister or another person may oppo se allowance of an amendment if a notice is 
published under subregulation (2). 
 
 (4) For the purposes of paragraph (2) (b), if:                (a) a request for leave to amend is filed before a pa tent is granted on an 
application under section 61 (“grant of standard patent”) or 62 (“grant and 
publication of petty patent”) of the Act; and 
              (b) the proposed amendments relate to the name or address of an applicant for 
the patent; 
  the proposed amendments are not taken to  materially alter the meaning or scope of 
the patent request or other filed document. 
 10.6 Time for allowance of amendments 
 
 (1) If:                (a) the Commissioner grants leave to amend a patent request, complete 
specification or other filed document; and 
  (b) subregulation 10.5 (2) does not apply to the amendment;   the Commissioner must allow the proposed amendment immediately.   (2) If: IP/N/1/AUS/P/6 
Page 56  
 
   
              (a) subregulation 10.5 (2) applies to a proposed amendment of a patent request, 
complete specification or other filed document; and 
  (b) no person opposes the allowance of the proposed amendment; and   (c) the Commissioner is satisfied that  no relevant proceedings are pending; 
  the Commissioner must allow the proposed  amendment at the end of the time for 
bringing opposition proceedings. 
  (3) If:  
              (a) subregulation 10.5 (2) applies to a proposed amendment of a patent request, 
complete specification or other filed document; and 
  (b) a person opposes the allowan ce of the proposed amendment; and 
  (c) the opposition is deci ded against the opponent; and 
  (d) the Commissioner is satisfied that  no relevant proceedings are pending; 
  the Commissioner must allow the proposed amendment immediately after the 
opposition is fully determined. 
  (4) For the purposes of subregulation (3),  an opposition is fully determined when: 
               (a) a decision has been made in respect of the opposition and the decision is no 
longer subject to any form of review (including review by way of appeal 
against a decision of the Tribunal or a prescribed court); or 
              (b) a decision that has been made in respect of the opposition was subject to 
review (including review by way of appeal against a decision of the Tribunal or a prescribed court) but the period within which review proceedings could 
have been instituted has expired with out review proceedings having been 
instituted; or 
  (c) the opposition is withdrawn.   (5) If the Commissioner requires a patentee to file a statement that, to the best of the 
knowledge of the patentee, relevant proceed ings are not pending, the patentee must 
file the statement within 1 month of the Commissioner so requiring. 
 
10.7 Correction of Register or patent 
 
 (1) The Commissioner may, on a request being made in the approved form, amend: 
 
  (a) an entry in the Register for the purposes of:     (i) correcting a clerical error or an obvious mistake; or                            (ii) if a name or an address entered in the Register has been changed — 
changing the name or address; or 
 
              (b) a patent for the purposes of correcting a clerical error or an obvious mistake.   (2) The Commissioner may, if he or she pr oposes to amend a patent or an entry in the 
Register, give notice to a person whose name is entered in the Register as having an 
interest in the patent. 
  (3) If a proposed amendment would materially alter the meaning or scope of an entry in 
the Register or a patent, the Commissioner must publish in the Official Journal a 
notice of the request to amend the entry or the patent.  IP/N/1/AUS/P/6 
 Page 57 
 
 
   
 (4) If a notice is published, a person may oppose the making of the amendment.   (5) If the Commissioner publishes a notice of the request to amend, he or she must 
amend the patent or the entry in the Register: 
 
  (a) where a person has not opposed allowance of the amendments; or               (b) subject to the terms of any decision of a prescribed court, the Tribunal or the 
Commissioner in respect of the opposition. 
 
 (6) The Commissioner may, of his or her own motion, amend a patent or an entry in the 
Register to correct a clerical error or an obvious mistake. 
 
10.8 Prescribed decisions: appeal to Federal Court 
  For the purposes of subsection 104 (7) of the Act (“amendments by applicants and 
patentees”), a prescribed decision is a decision to  grant leave to amend a patent request or 
complete specification to whic h paragraph 10.5 (1) (b) applies (“Commissioner to grant leave 
to amend”). 
 
10.9 Pending proceedings: amendments relating to micro-organisms 
 
 The Commissioner must not amend a complete specification relating to a patent if the 
amendment would include matters mentioned in paragraph 6 (c) of the Act (“deposit 
requirements”) while relevant proceedings are pending. 
 10.10 Prescribed period: filing of court order 
 
 For the purposes of subsection 105 (5) of the Act (“amendments directed by court”), the 
period of 14 days from the date of the order of the court is prescribed. 
 
10.11 Form of direction by Commissioner: patents 
 
 A direction of the Commissioner under subsecti on 106 (1) of the Act (“amendments directed 
by Commissioner: patents”): 
   (a) must be in writing; and 
              (b) must state the grounds on which he or she is satisfied that the patent relating 
to the direction is invalid; and 
              (c) must specify the time within which the patentee must file a relevant statement 
of proposed amendments. 
 
10.12 Form of direction by Commissioner: applications 
 
 A direction of the Commissioner under subsecti on 107 (1) of the Act (“amendments directed 
by Commissioner: patent applications”): 
   (a) must be in writing; and 
              (b) must state the grounds on which he or she is satisfied that there are lawful 
grounds of objection to the patent re quest or complete specification; and 
              (c) must specify the time within which the applicant must file a relevant 
statement of proposed amendments. 
 IP/N/1/AUS/P/6 
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  10.13 Form of direction by Commissioner:  extension of petty patent term 
 
 A direction of the Commissioner under subsecti on 108 (1) of the Act (“amendments directed 
by Commissioner: extensions of term of petty patents”): 
 
  (a) must be in writing; and 
              (b) must state the grounds on which he or she is satisfied that the petty patent 
relating to the direction is invalid; and 
              (c) must specify the time within which the patentee must file a relevant statement 
of proposed amendments. 
 10.14 Form of request: claim under assignment or agreement 
 
 A request under subsection 113 (1) of the Act (“persons claiming under assignment or 
agreement”) for a direction of the Commi ssioner must be in the approved form.  
 
Chapter 11 Infringement 
   11.1 Infringement exemptions: prescribed foreign countries 
 
 For the purposes of the definitions of foreign aircraft , foreign land vehicle and foreign vessel  
in the Act, each of the foreign countri es specified in Schedule 4 is prescribed.  
 
Chapter 12 Compulsory licences and revocation of patents 
   12.1 Lodgment of applications for compulsory licences 
 
 (1) For the purposes of subsection 133 (1) of  the Act (“compulsory licences”), the period 
of 3 years after the date of sealing of the patent to which the application relates is 
prescribed. 
  (2) An applicant must lodge with the Regi strar of the prescribed court to which the 
application is made: 
   (a) a copy of the application that includes:     (i) the name and address of the applicant; and 
   (ii) the address for service in relation to the application; and 
   (iii) the identity of the patent; and                            (iv) fact s supporting the assertion that the reasonable requirements of the 
public with respect to the patented invention have not been satisfied; 
and 
 
              (b) a declaration by the applic ant to the effect that the facts in the statement are 
true to the best of the knowledge of the applicant. 
  (3) The applicant must:  
              (a) serve a copy of the a pplication and declaration on the patentee and any other 
person who claims an interest in th e patent as soon as practicable after 
lodgment; and 
              (b) lodge with the Registrar notice of the date when, and the place where, he or 
she complied with paragraph (a).  IP/N/1/AUS/P/6 
 Page 59 
 
 
   
12.2 Prescribed period: revocation of standard patent 
 
 (1) For the purposes of subsection 134 (1) of th e Act (“revocation of standard patent after 
grant of compulsory licence”), the period of 2 years after the date of the grant of the 
first compulsory licence in respect of a standard patent is prescribed. 
  (2) A prescribed court may, as a preliminary issue, hear and determine the question of the 
right of the person concerned to apply for re vocation of a patent in respect of which a 
compulsory licence has been ordered. 
 
12.3 Form of notice: offer to surrender patent 
 
 (1) A notice under subsection 137 (1) of th e Act (“revocation on surrender of patent”) 
must be in the approved form. 
 
 (2) Notice of an offer to surrender under su bsection 137 (2) of the Act must be published 
in the Official Journal . 
  (3) An interested person must, not later th an 1 month after the publication, give the 
Commissioner notice of his or her wish to  be heard under subsection 137 (3) of the 
Act. 
  (4) The Commissioner may, as a preliminary issue, hear and determine the question of 
the right of the person concerned to be heard. 
 12.4 Applications to revoke patents 
 
 (1) An applicant to a prescribed cour t for an order to revoke a patent under 
subsection 138 (1) of the Act (“revocation of  patents in other circumstances”) must 
include in: 
 
  (a) the pleading; or 
  (b) another document disputing the validity of the patent;   particulars of the grounds on which he or she relies.   (2) If 1 of those grounds is that the inven tion is not a patentable invention because of 
information about the invention in a document or through the doing of an act, the 
particulars must specify: 
               (a) in the case of a do cument — the time when, and the place where, the 
document is alleged to have b ecome publicly available; and 
  (b) in the case of an act: 
 
   (i) the name of the person a lleged to have done the act; and 
                           (ii) the pe riod in which, and the place where, the act is alleged to have 
been done publicly; and 
   (iii) a description that is sufficient to identify the act; and 
                           (iv) if the act relates to apparatus or machinery — whether the apparatus 
or machinery exists and, if so, where it can be inspected. 
  (3) Except by leave of the court:  IP/N/1/AUS/P/6 
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                (a) evidence is not admissible to prove a ground of invalidity that has not been 
disclosed in the particulars in relation to that ground; and 
              (b) evidence as to apparatus or  machinery that exists at the date of lodgment of 
the particulars is not admissible unless it is proved that the party relying on the evidence: 
 
                           (i) if the apparatus or machinery is in his or her possession — has 
offered the opportunity to inspect it; or 
                           (ii) in any other case — has used reasonable endeavours to obtain its 
inspection; 
   to, or by, each other party to the hearing of the application. 
  (4) The court may:    (a) extend the time for giving particulars; and 
  (b) allow the amendment of particulars.  
 
Chapter 13 Withdrawal and lapsing of applications and ceasing of patents 
   13.1 Publication of notice of withdrawal of application 
  The Commissioner must publish notice in the Official Journal of the withdrawal of a patent 
application under section 141 of the Ac t (“withdrawal of applications”). 
 
13.2 Prescribed period: request for examination of applications 
  The period of 9 months from the date on which the request for deferment of the examination 
was filed is prescribed for the purposes of para graph 142 (2) (c) of the Act (“lapsing of 
applications”). 
 
13.3 Prescribed period: continuation fees 
  (1) For paragraph 142 (2) (d) of the Act: 
               (a) a continuation fee for an  application for a standard patent is payable for a 
relevant anniversary at the last moment of the anniversary; and 
              (b) the period in which the fee must be paid is the period ending at the last 
moment of the anniversary. 
  (1A)  However, if the continuation fee is paid with in 6 months after the end of the relevant 
anniversary ( 6 month period ): 
               (a) the period mentioned in paragraph (1) (b) is taken to be extended until the fee 
is paid; and 
              (b) the additional fee stated in column 3 of item 7 of Part 2 of Schedule 7 is 
payable from the first day of the 6 month period. 
  (2) In the case of an application to whic h section 33 (“applications by opponents 
etc.”), 34 (“applications by eligible pers ons arising out of court proceedings”), 35 
(“applications by eligible persons fo llowing revocation by Commissioner”), 36 
(“other applications by eligib le persons”) or 39 (“divisiona l applications”) of the Act 
applies, a continuation fee that is payable be fore 12 months after the date of filing of 
the application is taken to have been paid.  IP/N/1/AUS/P/6 
 Page 61 
 
 
   
 (3) In this regulation, relevant anniversary , for an application for a standard patent, 
means an anniversary: 
               (a) of the date that would be the date of the patent if a patent had been granted on 
the application; and 
  (b) that is mentioned in column 2 of item 7 of Part 2 of Schedule 7. 
 
Note 1    For the date of a patent, see section 65 of the Act and regulation 6.3. 
 
Note 2    For the fees payabl e, see regulation 22.2. 
 
13.4 Prescribed period: acceptance of request and specification 
  (1) Subject to this regulation, th e period prescribed for the purposes of 
paragraph 142 (2) (e) of the Act (“lapsi ng of applications”) in relation to an 
application is: 
               (a) if the applicant has not made a request under subsection 47 (1) of the Act 
(“request for modified examination”) — the period of 21 months 
commencing on the date of the first report (if any) under section 45 of the Act (“examination”); 
              (b) the period of 21 months commencing on the date of the first report (if any) 
under section 48 of the Act (“modified examination”); 
              (c) if examination is requ ested under subsection 47 (2) of the Act (“request for 
modified examination”) after the Co mmissioner first reports under section 48 
of the Act — the period of 12 months commencing on the date of the first report on the examination under section 45 of the Act; 
              (d) if the Commissioner has reported that the patent request or complete 
specification relates to an invention that , so far as claimed, is not novel in 
view of information of the kind describ ed in subparagraph (b) (ii) of the 
definition of prior art base  in the Act — the period of 3 months commencing 
on the earlier of: 
                            (i) the date of publication of the specification containing that 
information; or 
   (ii) its lapsing, refusal or withdrawal;                (e) if the patent request a nd complete specification rela te to an application in 
relation to which a request has been made under section 32 of the Act (“disputes between applicants etc.”) — subject to subregulation (3), the 
period of 3 months commencing on the date of the determination by the 
Commissioner under that section; 
  (f) if:                             (i) a pe rson has applied under subsection 36 (1) of the Act (“other 
applications by eligible persons”) in  relation to the patent request and 
complete specification; and 
                           (ii) the Commissioner declares under that su bsection that the applicant in 
relation to the request and comple te specification is an eligible 
person; 
  subject to subregulation (3), the pe riod of 3 months commencing on the date 
of that declaration; IP/N/1/AUS/P/6 
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  (g) if:                             (i) a pe rson has applied under subsection 36 (1) of the Act (“other 
applications by eligible persons”) in  relation to the patent request and 
complete specification; and 
                           (ii) the Commissioner declares under that subsection that that person is 
an eligible person; 
   either:                            (iii) if the person has already lodged an application — subject to 
subregulation (3), the period of 3 months commencing on the date of 
the Commissioner’s declaration; or 
                           (iv) in any other case — the period determined under whichever of 
paragraphs (a), (b) and (c) applies; 
 
              (h) if an appeal has been ma de to a prescribed court, or an application for review 
has been made to the Tribunal, in relation to the patent request or complete specification — subject to subregulation (4), the period of 3 months commencing on the day when the appeal or application is withdrawn or finally dealt with or determined; 
 
  (j) if: 
    (i) the application is for a patent of addition; and                            (ii) an app eal has been made to a prescribed court or an application for 
review has been made to the Tribunal in respect of the application for 
a patent for the main invention; 
                    subject to subregul ation (4), the period of 3 months commencing on the day 
when the appeal or application is withdrawn or finally dealt with or determined; 
               (k) if the Commissioner re quests a document under subparagraph 1.6 (1) (b) (ii) 
or paragraph 1.6 (1A) (b) — 5 mont hs commencing on the date of the 
request. 
  (2) If more than 1 of paragraphs (1) (a) to (k) applies in a particular case, the lapsing 
period is the longer or longest period so worked out. 
 
 (3) If paragraph (1) (e) or (f) or subparagra ph (1) (g) (iii) applies, the Commissioner may 
substitute a period longer than 3 months, if the Commissioner is satisfied that acceptance of the patent request and comp lete specification should be postponed. 
  (4) If paragraph (1) (h) or (j) applies, the c ourt or Tribunal may in its discretion substitute 
a period longer than 3 months. 
 
13.5 If applications lapse 
 
 If a complete application lapses under sec tion 142 (“lapsing of applications”), the 
Commissioner must advertise that fact in the Official Journal . 
 
13.6 Time for payment of renewal fee for standard patent 
 
 (1) For paragraph 143 (a) of the Act:  IP/N/1/AUS/P/6 
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              (a) a renewal fee for a standard  patent is payable for a relevant anniversary at the 
last moment of the anniversary; and 
              (b) the period in which the renewal fee must be paid is the period ending at the 
last moment of the anniversary. 
 
 (1A) However, if an extension of the term of a standard patent is  granted under section 76 
of the Act, the period in paragraph (1) (b) is taken to be extended until 6 months after 
the extension is granted for each relevant anniversary happening: 
 
  (a) on or after the twentieth annive rsary of the date of the patent; and 
  (b) on or before the day the extension is granted.   (2)  However, if the period mentioned in paragr aph (1) (b) is not taken to be extended 
under subregulation (1A), and the renewal fee is  paid within 6 mont hs after the end of 
the relevant anniversary ( 6 month period ): 
               (a) the period mentioned in paragraph (1) (b) is taken to be extended until the fee 
is paid; and 
              (b) the additional fee stated in column 3 of item 7 of Part 2 of Schedule 7 is 
payable from the first day of the 6 month  period. 
 
 (3) If a continuation fee is paid for a relevant anniversary in accordance with 
regulation 13.3, the renewal fee for that a nniversary is taken to have been paid. 
  (5) The Commissioner must publish notice in the Official Journal of a patent that ceases 
under section 143 of the Act.  
  (6) In this regulation, relevant anniversary , for a standard patent, means an anniversary: 
   (a) of the date of the patent; and   (b) that is mentioned in column 2 of item 7 of Part 2 of Schedule 7.  
Note  1   For the date of a patent, see section 65 of the Act and regulation 6.3. 
 
Note 2    For the fees payabl e, see regulation 22.2. 
 
Chapter 15 Special provisions relating to associated technology    15.1 Time for restoration of application for patent 
 
 A request under subsection 150 (1) of the Act (“ restoration of lapsed application”) must be 
filed within 3 months after the revocation under section 149 of the Act (“revocation of 
direction”) of a direction in respect of the application to which the request relates. 
 
15.2 Requirements for reinstatement of international applications 
 
 (1) For the purposes of paragraph 151 (4) (c) of  the Act (“reinstatement of application as 
an international application”), the peri od of 3 months after the revocation of a 
direction under section 149 of the Act (“re vocation of direction”) is prescribed. 
  (2) For the purposes of paragraph 151 (4) (d) of the Act, the patent request, the 
specification to which the request relates and such other documents as are prescribed IP/N/1/AUS/P/6 
Page 64  
 
  for the purposes of subsection 29 (1) of the Act (“application for patent”) are 
prescribed. 
  (3) For the purposes of paragraph 151 (4) (d) of  the Act, the fee that would have been 
payable if the application had been filed under section 29 of the Act is prescribed. 
 
15.3 Prescribed period: order relating to a standard patent 
 
 For the purposes of subsection 153 (3) of the Act (“effect of order”), the period of 1 month 
from the revocation of the order under subsection 152 (3) of the Act (“notice of prohibitions 
or restrictions on publication”) that re lates to the application is prescribed.  
 
Chapter 17 The Crown 
    17.1 Prescribed period: order relating to a standard patent 
 
 For the purposes of subsection 174 (2) of the Ac t (“effect of prohibition orders”), the period 
of 1 month from the revocation of an order under subsection 173 (1) of the Act (“prohibition 
of publication of information about inventions”) that relates to the application is prescribed. 
 
17.2 Prescribed period, document and fee:  filing of international applications 
 
 (1) For the purposes of paragraph 176 (c) of th e Act (“international applications treated 
as applications under this Act”), the peri od of 3 months from the date on which an 
international application is considered to be withdrawn under Article 12 of the PCT is 
prescribed. 
 
 (2) For the purposes of paragraph 176 (d) of the Act, the patent request, the specification 
relating to the request and such other docu ments as are prescribed for the purposes of 
subsection 29 (1) of the Act (“app lication for patent”) are prescribed. 
  (3) For the purposes of paragraph 176 (d) of  the Act, the fee that would have been 
payable if the application had been filed under section 29 of the Act is prescribed. 
 
Chapter 19 The register and official documents 
   19.1 Particulars to be registered 
 
 (1) For the purposes of section 187 of the Ac t (“registration of particulars of patents 
etc.”), the following particulars are prescribed, that is, particulars of: 
               (a) an entitlement as mortgage e, licensee or otherwise to an interest in a patent; 
              (b) a transfer of an entitlement to a patent or licence, or to a share in a patent or 
licence; 
  (c) an extension of the term of a patent;   (d) a restoration of a standard patent;               (e) an order of a court a copy of which is filed under subsection 105 (5) of the 
Act (“amendments directed by court”); 
                          (f) an order of a prescribed court that has been served on the Commissioner 
under section 140 of the Act (“Commissioner to be given copies of orders”); 
              (g) an order of a prescribed court made on appeal in rela tion to a patent, being an 
order of which an office copy h as been served on the Commissioner;  IP/N/1/AUS/P/6 
 Page 65 
 
 
                (h) a decision of the Commissioner to revoke a patent under Chapter 9 of the Act 
(“re-examination”); 
                (i) the acquisition of a pa tent by the Commonwealth under Part 3 (“acquisitions 
by and assignments to the Crown”) of Chapter 17 (“the Crown”) of the Act; 
  (j) the cessation of a patent. 
  (2) A request for registration of particulars re ferred to in paragraph (1) (a) or (b) must be 
in the approved form and have with it pr oof to the reasonable satisfaction of the 
Commissioner of the entitlement of the person making the request. 
 
19.2 Request for information from Commissioner 
 
 (1) A request made to the Commissioner under section 194 of the Act (“information 
obtainable from the Commissioner”) must be in the approved form. 
 
 (2) A request under Article 15 (5) of the PCT for an international-type search to be 
carried out must be made by the applicant re ferred to in that Article within 3 months 
of the making of the application referred to in the Article.  
 
Chapter 20 Patent attorneys  
 
Part 1 Introductory    20.1 Interpretation 
  In this Chapter, unless the contrary intention appears: 
 
 Board  means the Professional Standards Board for Patent and Trade Marks Attorneys. 
 
 candidate  means a person who proposes or proposed to  sit, or has sat, for an examination. 
 
 Chairperson  means Chairperson of the Board. 
 
 Disciplinary Tribunal  means the Patent Attorneys Disciplinary Tribunal established by 
regulation 20.41. 
 
 examination  means an examination held under regulation 20.6. 
 
 former attorney  means a patent attorney whose regist ration has been suspended or cancelled 
under Part 4 (“discipline”). 
 
 Institute  means the Institute of Patent and Trade Mark Attorneys of Australia incorporated 
under the law of Victoria. 
 
 Register of Patent Attorneys  means the register kept under section 198 of the Act 
(“registration of patent attorneys”). 
 
 unprofessional conduct  means conduct on the part of a registered patent attorney whereby he 
or she can be regarded as committing a gross failu re to comply with the standards that, in the 
circumstances, it is reasonable to require th e registered patent attorney to observe. 
 IP/N/1/AUS/P/6 
Page 66  
 
   unqualified , in relation to a particular time, means lacking a qualification required for 
registration at that time by these Regulations or the former attorneys Regulations. 
 
 unsatisfactory conduct  means not having attained or sustained a professional standard that is 
consistent with the standard of prac tice of registered patent attorneys. 
 
20.2 How to apply under Chapter 20 
 
 A person may apply under this Chapter by sending the application to the Board at the 
following address: 
 
 Professional Standards Board for  
  Patent and Trade Marks Attorneys PO Box 200 WODEN  ACT  2606. 
 
20.2A Accreditation of courses of study 
 
 (1) The Board may accredit a course of stud y, provided by an institution, that: 
               (a) achieves the outcome stated for a topic group mentioned in Schedule 5; and 
  (b) includes the topics mentioned for the topic group. 
  (2) In considering whether to accredit a c ourse, the Board must consider information 
provided by the institution. 
 
 (3) If the institution gives the Board sufficien t information to decide whether the course 
achieves the outcome stated for a topic group mentioned in Schedule 5, the Board 
must decide whether to accredit the course: 
   (a) within 2 months after receiving the information; or               (b) if the Board asks for more information — within 2 months after receiving 
that information. 
  (4) Accreditation is for 5 years.   (5) However, the Board may revoke an accreditation if: 
 
  (a) changes are made to the course; and               (b) the Board decides that  the course no longer achieves the outcome stated for 
the topic group. 
  (6) If an institution intends to change an  accredited course, it must tell the Board in 
writing. 
 
20.2B Provisional accreditation 
 
 (1) The Board may provisionally accredit a course if: 
 
  (a) the institution has sought accreditation for the course; and               (b) the information provided  by the institution shows that the course includes the 
topics mentioned for a topic group; and  IP/N/1/AUS/P/6 
 Page 67 
 
 
                (c) the Board has not fully considered the course in time for the start of an 
academic semester. 
  (2) Provisional accreditation is for the duration of the course that starts after the course is 
provisionally accredited. 
 
 (3) The Board may provisionally accredit a changed course if:                (a) the change to the cour se might remove from its scope some topics mentioned 
in Schedule 5; and 
              (b) the Board considers th at the changed course achieves the outcome stated for 
the topic group mentioned in Schedule 5. 
 
Part 2 Obtaining registration for the first time 
 
Division 1 Generally 
 20.3 Requirements for registration  
 (1) For paragraph 198 (4) (b) of the Act, the qualifications are: 
 
  (a) for each topic group mentioned in Schedule 5 — a pass in: 
                            (i) a course of study, that includes the subject matter in the topic group, 
accredited by the Board; or 
 (ii) the examination conducted by the Board; and 
 
              (b) an award or the entitle ment to an award of a qualification mentioned in 
Schedule 6. 
  (2) For paragraph (1) (a), an exemption under regulation 20.13 is taken to be a pass in the 
topic group for which the exemption is granted. 
 
 (3) For paragraph 198 (4) (c) of th e Act, the person must be employed: 
   (a) in any of the following capacities:  
   (i) as a technical assistant in a patent attorney’s practice; 
                           (ii) in empl oyment in a company practising in  patent matters on behalf of 
the company or a related company within the meaning of the Corporations Law; 
                           (iii) in the Patent Office as an examiner of patents under the Act or 
the 1952 Act; and 
  (b) for either: 
    (i) 1 year continuously; or    (ii) at least 1 year within 2 continuous years.  
 (4) For paragraph 198 (4) (e) of the Ac t, an offence against the Act, the Designs Act 1906  
or the Trade Marks Act 1995  is a prescribed offence. 
  (5) For paragraph 198 (4) (f) of the Act,  an offence of dishonesty for which the 
maximum penalty is imprisonment for at least 2 years is a prescribed offence. IP/N/1/AUS/P/6 
Page 68  
 
   
20.3A Currency of pass or exemption 
 
 (1) For paragraph 20.3 (1) (a), a pass in a topic group or an exemption under 
regulation 20.13 remains current for the purpose of completing topic groups A, B, C 
and D or topic groups E, F, G, H and I: 
               (a) if the institution has a policy on time periods to complete courses of study — 
for the period that accords with that policy; or 
              (b) for the Board, or if the institution has no policy — for 5 years from the year 
in which the circumstances under subregulation (2) or (3) happen. 
  (2) For topic groups A, B, C and D, the candidate must:    (a) have passed the first examination in a subject in 1 of the topic groups; or 
              (b) have been exempted under regulation 20.13 from having to pass a subject in 
the topic group. 
  (3) For topic groups E, F, G, H and I, the candidate must:    (a) have completed topic groups A, B, C and D; and 
  (b) either: 
                            (i) have passed the first examination in a subject in 1 of the topic 
groups; or 
                           (ii) have been exempted under regulation 20.13 from having to pass a 
subject in the topic group. 
 
20.4 Procedure for registration 
 
 A person may apply for registration as a patent attorney in the approved form together with: 
 
  (a) evidence that the person is ordinarily resident in Australia; and 
              (c) a written statement by th e Board that the person has met the requirements of 
paragraph 198 (4) (b) of the Act; and 
              (d) evidence that the person has been employed as required by regulation 20.3 
(“requirements for registration”); and 
  (e) a statutory declaration by the person that the person: 
                            (i) has not committed an offence prescribed by subregulation 20.3 (4); 
and 
                           (ii) is not under sentence of imprisonment for an offence prescribed by 
subregulation 20.3 (5); and 
 
              (f) a statutory declarati on, by another person, that the person is of good fame, 
integrity and character; and 
  (g) the fee mentioned in item 4 of Part 1 of Schedule 7.  20.5 Certificate of registration 
 
 When the Designated Manager registers a person as a patent attorney the Designated Manager 
must give to the person a certificate of registration in the approved form. 
  IP/N/1/AUS/P/6 
 Page 69 
 
 
  Division 2 Prescribed subjects and academic qualifications 
 20.6 Board examinations 
 
 (1) The Board may hold examinations fo r topic groups mentioned in Schedule 5. 
 
 (2) The Board may appoint examiners for the purposes of the examinations and give 
them instructions about the setting and marking of papers. 
  (3) Examiners appointed under this regulati on are entitled to be paid the fees that the 
Minister determines in writing. 
 
20.7 Time for holding Board examinations 
 
 (1) The Board must arrange to publish in the Official Journal adequate notice of: 
 
              (a) the time of each examin ation it holds and the place where it is to be held; and 
              (b) the deadline for appli cations for admission to sit for each examination it 
holds. 
  (2) Subregulation (1) does not apply to a supplementary examination under 
regulation 20.12 (Supplementary Board examination). 
 
20.8 Examinable subject matter 
 
 From time to time the Board must arrange to publish in the Official Journal particulars of: 
 
 (a) syllabus for the examinations in the rele vant topic groups mentioned in Schedule 5; 
and 
 (b) the reading and study material it recommends to candidates.   20.9 Admission to sit for a Board examination 
 (1) An application by a person to sit for an examination must be in the approved form. 
  (2) A person is not eligible to sit for an  examination conducted by the Board in topic 
group F, G or H of Schedule 5 unless the person has completed, or has been 
exempted from completing, topic groups A, B, C, D, E and I of Schedule 5. 
  (3) Despite subregulation (2), a person who has passed the subjects mentioned in 
items 1, 2, 3 and 4 of Schedule 5 (as in fo rce immediately before 27 January 1999) is 
eligible to sit for an examination conducted  by the Board in topic group E, F, G, H 
or I of Schedule 5. 
 
Note    The subjects mentioned in items 1, 2, 3 and 4 of Schedule 5, as in force immediately 
before 27 January 1999, were: 
 
Item Subject 
1 Legal Process 
2 Patent Law of Australia and the Practice of the Patent Office 3 Trade Marks Law of Australia and the Practice of the Trade Marks Office 4 Designs Law and Related Intellectual Propert y Laws of Australia and the Practice of 
the Designs Office. IP/N/1/AUS/P/6 
Page 70  
 
   
20.10 Notification of Board examination results 
 
 As soon as practicable after an examination c onducted by the Board, the Board must give to 
each candidate who sat for the examination his or her results in the examination. 
 
20.11 Reasons for failure of Board examination 
 
 (1) A candidate who fails an examinati on conducted by the Board may apply to the 
Board in the approved form within 1 month af ter being told of the failure for a report 
of the reasons for the failure. 
  (2) For subregulation (1), a report may be given by:    (a) the Board; or 
              (b) if the Board approves — the examiner appointed under 
subregulation 20.6 (2). 
 
20.12 Supplementary Board examination 
 
 (1) An application by a person to sit for a supplementary examination must be in the 
approved form. 
  (2) The Board may let a candidate sit for a supplementary examination if the candidate: 
               (a) failed an examination a nd applies to the Board to sit for the supplementary 
examination within 1 month of being told of the failure; or 
              (b) did not sit for the ex amination because of illness or another reason that the 
Board reasonably considers sufficient and he  or she applies to the Board to sit 
for the supplementary examination within 1 month of the examination. 
  (3) For an application under paragraph (2) (a), the Board may take account of an 
examiner’s comments on the candidate’s performance. 
  (4) An application under paragraph (2) (b) must be accompanied by evidence:    (a) of the reason for failing to sit the examination; and 
              (b) that was obtained at th e time of the illness or the occurrence of the events 
giving rise to the other reason. 
 
20.13 Exemption from examination 
 
 (1) The Board may exempt a person from having to satisfy all or some of the 
requirements of a topic group mentioned in Schedule 5. 
  (2) The Board must not give an exemption to a person unless:    (a) the person makes an application in the approved form; and 
              (b) the person gives the Bo ard enough information for the Board to be satisfied 
under paragraph (c); and 
  (c) the Board is satisfied that:                             (i) the person has passed a course of study at a satisfactory level; and  IP/N/1/AUS/P/6 
 Page 71 
 
 
                             (ii) the course of study has outcomes that are the same as, or similar to, 
those of an accredited course for the topic group for which the exemption is sought.  
 
20.14 Approval of courses and examinations 
 
 (1) The Board may approve a course mentioned in item 1 or 2 of Schedule 6.   (2) In approving a course, the Board must:  
  (a) have regard to the syllabus for the course; and 
              (b) in the case of a course mentioned in item 2 of Schedule 6 — reasonably 
believe that the standard of the course is at least equal to the standard of a degree, diploma or postgraduate award of  an Australian tertiary institution in 
a field of technology that contains potentially patentable subject matter. 
 
 (3) The Board may approve an examina tion mentioned in item 3 of Schedule 6. 
  (4) In approving an examination referred to in subregulation (3), the Board must have 
regard to the syllabus for any course undertaken by a person preparing for the examination. 
 
 (5) For the purposes of item 3 of Schedule 6, the Board may approve a professional 
institution. 
 
20.15 Approval of academic qualifications 
 
  The Board may approve a qualification mentioned in Schedule 6 for a person if: 
   (a) the person makes an application in the approved form; and   (b) the application has with it:  
   (i) evidence that the person has the qualification; and 
                           (ii) the original or a certified copy of an academic record that shows the 
units that make up the qualification; and 
   (c) the Board is reasonably satisfied  that the person has the qualification. 
 
20.16 Advice of completion of examinable subjects and of academic qualifications 
 
 The Board must give to a person a written st atement that the person has the qualifications 
mentioned in subregulation 20.3 (1) if: 
 
 (a) the person applies in the approved form; and 
 (b) there are reasonable grounds for believi ng that the person has the qualifications. 
 
Division 3 Rights of registered patent attorneys 
 
20.17 Lien  
 A registered patent attorney has the same right  of lien over documents a nd property of a client 
as a solicitor.  
 IP/N/1/AUS/P/6 
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  Part 3 Renewal of registration: payment of annual fee 
   20.18 Annual registration fee 
 
 (1) An annual registration fee is payable by a registered patent attorney to whom 
regulation 20.19A does not appl y on 1 July in each year. 
  (2) The Designated Manager must give to each registered patent attorney to whom 
regulation 20.19A does not appl y no later than 1 June in each year notice of the fee 
that is payable. 
 
 (3) If a registered patent attorney does not pa y the fee within 14 days after it is payable, 
the Designated Manager must: 
   (a) remove the name of the attorney from the Register of Patent Attorneys; and 
  (b) notify the attorney of that removal. 
 
20.19 Restoration of patent attorney’s name to the Register 
 
 The Designated Manager must restore a person’s na me to the Register of Patent Attorneys if: 
 
  (a) the person pays the fees mentioned in: 
    (i) regulation 20.18 ( annual registration fee ); and 
   (ii) item 7 of Part 1 of Schedule 7; and   
  (b) applies in the approved form; 
  within 6 weeks after the end of the pe riod mentioned in subregulation 20.18 (3) 
(“annual registration fee”) or such fu rther period as the Designated Manager 
reasonably allows. 
 
20.19A Voluntary removal of name from register 
 
 (1) On written application by a registered patent attorney, the Designated Manager must: 
   (a) remove the attorney’s name from the Register of Patent Attorneys; or 
              (b) within a period determined by the Designated Manager — restore the 
attorney’s name to the register on payment of: 
                            (i) the annual registration fee payable for the year in which the 
reinstatement is made; and 
   (ii) the fee mentioned in item 7 of Part 1 of Schedule 7.  
 (2) For paragraph (1) (b) the period must not be more than 3 years. 
  IP/N/1/AUS/P/6 
 Page 73 
 
 
  Part 4 Discipline 
 Division 1 Complaints, decisions of the Di sciplinary Tribunal and consequential action 
 20.20 Complaints 
  (1) The Institute or a person who alleges th at his or her interests are affected by the 
unprofessional conduct of a registered patent attorney may make a written complaint to the Board about that conduct. 
 
 (2) The Institute or a person may complain in writing to the Board: 
   (a) that a patent attorney was unqualified at the time of his or her registration; or 
  (b) that the patent attorney obtained his or her registration by fraud.  
 (3) A complaint must: 
               (a) state the name of the registered patent attorney complained about and the 
address of the attorney, if known to the complainant; and 
  (b) state the nature of the complaint; and   (c) state the name and address of the complainant; and 
  (d) be signed by the complainant; and 
              (e) have with it a statutory declaration stating the facts on which the complainant 
relies to support the complaint. 
  (4) If the complaint is made by the Institute, th e statutory declaration must be made by an 
officer of the Institute. 
  (5) The Board must give to the registered patent attorney a copy of the complaint and 
statutory declaration and ask the attorney to give to the Board a written statement replying to the complaint. 
 
 (6) The statement must be given to the Boar d within the period specified by the Board, 
being a period of not less than 21 days from the day on which the registered patent attorney was asked to give a statement. 
  (7) The Board may request the Commissioner, the complainant or the registered patent 
attorney to give it further information not less than 21 days after the day on which the 
request was given. 
  (8) The period of 21 days for giving further information may be extended by the Board 
before or after that period. 
 20.21 Authorisation to bring proceedings  against a registered patent attorney 
 
 (1) A person may not bring proceedings agains t a registered patent attorney before the 
Disciplinary Tribunal unless the person is authorised under this regulation. 
 
 (2) The Board must give written authority to  a complainant to bring proceedings against 
a registered patent attorney: 
               (a) charging the attorney  with unsatisfactory con duct or unprofessional conduct; 
or IP/N/1/AUS/P/6 
Page 74  
 
                (b) charging that the attorney was unqualified at the time of his or her 
registration or obtained his or her registration by fraud; 
  if it appears to the Board, after cons idering the complaint and any reply and any 
further information given unde r regulation 20.20 (“complaints”), that the attorney 
may be guilty of conduct of that kind or may have been unqualified, as the case may 
be. 
  (3) If the Board authorises a complainant to bring proceedings, it must inform the 
complainant that he or she may ask the Board to bring those proceedings on the 
complainant’s behalf. 
 
 (4) If a person authorised to bring proceedings:                (a) informs the Board that he or she wants the Board to bring the proceedings — 
the Board must bring the proceedings on behalf of the complainant; or 
              (b) does not bring the proceedings within 21 days after the day on which the 
authority is sent to him or her — the Board may bring the proceedings on its own behalf. 
  (5) If a person has begun proceedings but fails to continue them, the Board may continue 
the proceedings on its own behalf. 
 
 (6) If the Board authorises proceedings agains t a registered patent attorney, the Board 
must: 
               (a) give the Disciplinar y Tribunal copies of the complaint and all other 
documents it holds that relate to the complaint; and 
  (b) notify the attorney, in writing, of that authorisation.   (7) If the Board, after considering a compla int and any reply and any further information 
given under regulation 20.20, decides not  to authorise proceedings against a 
registered patent attorney, it must give written notice of its decision to the 
complainant and the attorney. 
 
20.22 Bringing of proceedings 
 
 (1) Proceedings against a registered patent attorney arising from a complaint are to be 
brought before the Disciplinary Tribunal by lodging with that Tribunal: 
   (a) a copy of the complaint; and               (b) if the proceedings ar e to be brought by the complainant — a copy of the 
authorisation of the Board to bring proceedings. 
 
 (2) If proceedings are brought against a regi stered patent attorney, the Disciplinary 
Tribunal must fix a time and place for the hearing and notify: 
               (a) if the proceedings ha ve been brought by a complainant — the complainant; 
and 
  (b) the attorney; and 
  (c) the Board;   of that time and place.   IP/N/1/AUS/P/6 
 Page 75 
 
 
   (3) The time of hearing must not be less than 21 days after the day on which the 
registered patent attorney is told of the time and place. 
 
20.23 Decision of Disciplinary Tribunal 
  (1) If the Disciplinary Tribunal has heard a charge of: 
               (a) unsatisfactory conduct ag ainst a registered patent attorney — that Tribunal 
may find the attorney guilty of unprofessional conduct; or 
              (b) unprofessional conduct agai nst a registered patent attorney — that Tribunal 
may find the attorney guilty of unsatisfactory conduct. 
  (2) If the Disciplinary Tribunal finds a register ed patent attorney guilty of unsatisfactory 
conduct or unprofessional conduct, that Tribunal may: 
 
  (a) reprimand the attorney; or 
  (b) suspend the attorney’s registration for not more than 12 months; or               (c) where the attorney is guilty of unprofessional conduct — cancel his or her 
registration. 
  (3) In deciding what to do about a registered  patent attorney under subregulation (2), the 
Disciplinary Tribunal may take into account the findings about the conduct of the 
attorney in any other proceedings: 
   (a) brought before that Tribunal; or               (b) brought before the Patent Attorneys Disciplinary Tribunal under the former 
attorneys regulations. 
  (4) If the Disciplinary Tribunal has heard a ch arge against a registered patent attorney 
that the attorney was unqualified at the time  of his or her registration and finds the 
charge proved, that Tribunal may: 
 
              (a) if the attorney has, since that time, obtained that qualification or the 
qualification is no longer required for registration — reprimand the attorney; 
or 
  (b) in any other case — cancel his or her registration.  
 (5) If the Disciplinary Tribunal finds that a re gistered patent attorney obtained his or her 
registration by fraud, that Tribunal must cancel the registration of the attorney. 
  (6) If the Disciplinary Tribunal reprimands a registered patent attorney or suspends or 
cancels the attorney’s registration, that Tr ibunal must give a written notice of finding 
of the Tribunal against the attorney that  sets out particulars of the reprimand, 
suspension or cancellation to: 
   (a) if the proceedings were brought by a complainant — the complainant; and   (b) the attorney; and   (c) the Board; and 
  (d) the Designated Manager. 
  (7) If the registration of a registered pate nt attorney is suspended the Designated 
Manager must note the suspension and its duration in the Register of Patent Attorneys. IP/N/1/AUS/P/6 
Page 76  
 
   
 (8) If the registration of a registered patent  attorney is cancelled the Designated Manager 
must remove the name of the attorney from the Register of Patent Attorneys. 
  (9) If the Disciplinary Tribunal does not find a charge proved, that Tribunal must notify 
the registered patent attorney concerned,  the complainant and the Board accordingly. 
 
20.24 Publication of decision 
 
 If directed by the Disciplinary Tribuna l, the Commissioner must publish in the Official 
Journal a copy of a notice under subregulation 20.23 (6) (“decision of Disciplinary Tribunal”) 
or an extract of that notice. 
 
20.25 Completion of outstanding business 
  (1) The Disciplinary Tribunal may appoint a registered patent attorney who has 
consented to carry on the practice of a former patent attorney: 
               (a) if the registration of th e former attorney has been  suspended — for the period 
of the suspension or, if a shorter period is specified in the appointment, for that shorter period; or 
             (b) if the name of the form er attorney has been removed from the Register of 
Patent Attorneys under subregulation 20.23 (8) (“decision of Disciplinary Tribunal”) — until all outstanding matters are disposed of or, if a shorter period is specified in the appointment, for that shorter period. 
 
 (2) This regulation does not allow a registered patent attorney to act as a registered patent 
attorney on behalf of a person without the consent of the person. 
  (3) A registered patent attorney appointed to carry on the practice of a former attorney 
may give a written notice requiring the former attorney to make available to the attorney so appointed: 
 
  (a) any information about the practice that he or she may reasonably require; or               (b) any books, accounts or other documents concerning the practice that he or 
she may reasonably require; or 
  (c) any moneys held by the former attorney: 
 
   (i) on behalf of a client; or                            (ii) that have been paid by a client in respect of services not yet 
performed for the client. 
  (4) A former attorney who has been give n a notice under subregulation (3) must not, 
without reasonable excuse, fail or refuse to comply with a requirement in the notice. 
   Penalty:   $500.  
Division 2 Procedure etc relating to the Disciplinary Tribunal 
 
20.26 Procedure of Disciplinary Tribunal  
 (1) Subject to this Part, the Disciplinary Tribunal may determine its procedure. 
  IP/N/1/AUS/P/6 
 Page 77 
 
 
   (2) Proceedings before the Disciplinary Tribunal are to be conducted quickly and 
informally while allowing for proper consider ation of the matter before that Tribunal. 
  (3) The Disciplinary Tribunal is not bound by the rules of evidence but may be informed 
on any matter in the manner it chooses. 
 
 (4) The Disciplinary Tribunal may take evidence on oath and, for that purpose, may 
administer an oath. 
 
20.27 Hearings to be public except in special circumstances 
 
 (1) Subject to subregulation (2), a hearing before the Disciplinary Tribunal is to be in 
public. 
  (2) If the Disciplinary Tribunal is reasonably sa tisfied that it is desirable to do so in the 
public interest or because of the confidentia l nature of any evidence or matter, that 
Tribunal may: 
               (a) direct that a hearing, or a part of a hearing, is to take place in private and give 
directions as to the persons who may be present; and 
  (b) give directions restricting or prohibiting the publication or disclosure: 
 
                           (i) of evidence given before the Tribunal, whether in public or in 
private; or 
                           (ii) of any matters contained in documen ts lodged with the Tribunal or 
received in evidence by it; or 
   (iii) of any finding or decision of the Tribunal. 
  (3) A person must not contravene a direction under this regulation that is applicable to 
him or to her. 
   Penalty:   $500. 
 
20.28 Representation before Disciplinary Tribunal 
 
 (1) At the hearing of proceedings before the Disciplinary Tribunal, a party to the 
proceedings may appear in person or be represented by a legal practitioner. 
 
 (2) The Disciplinary Tribunal may allow a pe rson to be represented by a person who is 
not a legal practitioner. 
  (3) A party to proceedings before the Discip linary Tribunal, or his or her representative, 
may request that Tribunal to summon witnesses. 
 
20.29 Summoning of witnesses 
 
 (1) For the purposes of the hearing of a charge against a registered patent attorney before 
the Disciplinary Tribunal, that Tribunal may, by writing signed by the person 
constituting the Tribunal: 
               (a) summon any person, other than the attorney, to appear before the Tribunal to 
give evidence about the charge and to produce any documents mentioned in the summons; or IP/N/1/AUS/P/6 
Page 78  
 
    (b) summon the attorney to appear before the Tribunal: 
    (i) to produce any documents mentioned in the summons; and    (ii) to give evidence to identify those documents.  
 (2) A registered patent attorney summoned under this regulation must appear in person. 
 
20.30 Offences by persons appear ing before Disciplinary Tribunal 
 
 (1) A person summoned to appear before the Disciplinary Tribunal must not, without 
reasonable excuse: 
   (a) fail to appear as required by the summons; or   (b) fail to produce documents or articles as required by the summons; or               (c) fail to appear and report to that Tribunal from day to day, unless excused by 
the Tribunal. 
   Penalty:   $1,000.   (2) A person appearing as a witness before  the Disciplinary Tribunal, not being a 
registered patent attorney to whom subre gulation (3) applies, must not, after being 
paid expenses and allowances determined by  that Tribunal in accordance with Part 2 
in Schedule 8, without reasonable excuse: 
   (a) refuse or fail to be sworn or to make an affirmation; or 
              (b) refuse or fail to answer a question relevant to the ev idence that he or she was 
summoned to give. 
   Penalty:   $1,000.   (3) A registered patent attorney against w hom proceedings have be en instituted who is 
summoned to appear at a hearing before the Disciplinary Tribunal in respect of those 
proceedings must not, without reasonable excuse: 
   (a) refuse or fail to be sworn or to make an affirmation; or 
              (b) refuse or fail to answer a question relevant to the ev idence that he or she was 
summoned to give. 
 
  Penalty:   $1,000.   (4) It is a reasonable excuse for a person referre d to in subregulation (2) or (3) to refuse 
or fail to answer a question or to produce a document or article, if the answer to the 
question, or the document or article, may tend to prove that he or she has committed 
an offence against a law of the Commonwealth or of a State or Territory. 
 
20.31 Protection of person constituting  Disciplinary Tribunal, witnesses etc 
 
 (1) A person: 
 
  (a) constituting or acting as the Disciplinary Tribunal; or   (b) appointed under subregulation 20.45 (2) (“disclosure of interest”);  IP/N/1/AUS/P/6 
 Page 79 
 
 
    has, in the exercise of the powers and the performance of the functions of that 
Tribunal under this Part, the same protection and immunity as a Justice of the High Court. 
  (2) A member of the Board has, in considering complaints under this Part and 
authorizing the institution of proceedings be fore the Disciplinary Tribunal, the same 
protection and immunity as a Justice of the High Court. 
  (3) A legal practitioner or other person app earing before the Disciplinary Tribunal has 
the same protection and immunity as a barrister has in appearing for a party in 
proceedings in the High Court. 
  (4) Subject to this Part, a person summoned to attend or appearing before the 
Disciplinary Tribunal as a witness has the same protection, and is, in addition to the penalties provided by this Part, subject to the same liabilities, as a witness in 
proceedings in the High Court.  
 
Part 5 Administration 
 Division 1 The Professional Standards B oard for Patent and Trade Marks Attorneys 
 
20.32 Constitution of Board (Act, s 227A)  
  The Board is constituted by:    (a) the Chairperson, appointed by the Minister; and 
  (b) either: 
                            (i) the person holding, or carrying out the duties of, the office of the 
Director-General of the divisi on of the Department known as IP 
Australia; or 
   (ii) the nominee of that person; and 
 
  (c) at least 2 suitably qualified other members, appointed by the Minister.  
20.34 Term of office of Board members 
  The Minister may appoint a member of the Board for a term of up to 3 years. 
 
20.35 Resignation and removal of members from Board 
 
 (1) A member of the Board may resign by giving the Minister his or her resignation in 
writing. 
 
 (2) The Minister may remove a member of the Board if the member:                (a) is not the Chairpers on and has been absent from 3 consecutive meetings of 
the Board without leave given by the Chairperson; or 
              (b) is the Chairperson a nd has been absent from 3 consecutive meetings of the 
Board without leave given by the Board under regulation 20.40; or 
              (c) is convicted in Austra lia of an offence punishable by imprisonment for at 
least 12 months; or 
  (d) is a member to whom subregulation (3) or (4) applies. IP/N/1/AUS/P/6 
Page 80  
 
   
 (3) This subregulation applies to a member if the member:    (a) cannot perform his or her duties as a member of the Board; or               (b) has behaved in an offensiv e or disorderly way, or in a way that is likely to 
adversely affect the Board’s reputation; or 
  (c) has carried out his or her duties as a member of the Board inefficiently. 
  (4) This subregulation applies to a person who:  
  (a) becomes bankrupt; or 
              (b) applies to take the be nefit of a law for the relief of bankrupt or insolvent 
debtors; or 
              (c) compounds with his or her creditors or assigns his or her salary and 
allowances for their benefit. 
 
20.37 Meetings of the Board 
 
 (1) The Board must hold as many meetings as are necessary for the performance of its 
functions. 
 
 (2) The Chairperson may, at any time, by notice in writing to the members, call a 
meeting of the Board at the time and place specified in the notice. 
 
20.38 Member presiding at meetings of the Board 
  (1) The Chairperson must preside at all meetings of the Board at which he or she is 
present. 
  (2) In the absence of the Chairperson from a meeting, the members present must 
appoint 1 of themselves to preside. 
 
 (3) The Chairperson or a member who presid es at a meeting has a deliberative vote and, 
in the event of an equality of votes, also has a casting vote. 
 
20.39 Quorum for Board meetings 
  At a meeting of the Board, a quorum is formed by the majority of the members of the Board. 
 
20.40 Absence of Chairperson from meeting — leave from Board 
 
 If the Chairperson is absent from a meeting of  the Board, the members present must decide 
whether to give leave to the Chairperson. 
 
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal 
 20.41 Establishment of Disciplinary Tribunal 
  The Patent and Trade Marks Attorneys Disciplinary Tribunal is established. 
 
20.42 Disciplinary Tribunal: substantive appointments 
 
 (1) The Minister may in writing appoint a pe rson to constitute the Disciplinary Tribunal.  IP/N/1/AUS/P/6 
 Page 81 
 
 
   
 (2) A copy of the instrument of appointment must be published in the Official Journal . 
  (3) A person so appointed holds the office for the period specified in the instrument.  
 (4) A person so appointed may resign in writing given to the Minister. 
  (5) The Minister may remove a person so  appointed from office for inefficiency, 
misbehaviour or incapacity. 
 
 (6) If a person so appointed: 
               (a) becomes bankrupt, applies to take the benefit of a law for the relief of 
bankrupt or insolvent debtors, compounds with his or her creditors or makes 
an assignment of his or her remuneration for their benefit; or 
              (b) is convicted in Au stralia of an offence punishable by imprisonment 
for 12 months or longer; or 
              (c) fails, without reasonable excuse, to disclose a conflict of interest in 
accordance with regulation 20.45 (“disclosure of interest”); 
  the Minister is to remove the person from office.  20.43 Disciplinary Tribunal: acting appointments 
 
 (1) The Minister may in writing appoint a person to act as the Disciplinary Tribunal:                (a) during a vacancy in th e office, whether or not an appointment has been 
previously made to the office; or 
              (b) during any period, or durin g all periods, when the holder of the office is, or is 
expected to be, absent from duty or from Australia or is, for any reason, unable to perform the functions of the office; 
  but a person appointed to act during a vacancy must not continue to act for more 
than 12 months. 
 
 (2) A copy of the instrument of appointment must be published in the Official Journal . 
  (3) The Minister:  
  (a) may terminate the appointment at any time; and 
              (b) is to terminate th e appointment if the pers on appointed fails, without 
reasonable excuse, to disclose a conflic t of interest in accordance with 
regulation 20.45 (“disclosure of interest”). 
  (4) Anything done by or in relation to a pe rson purporting to act unde r the appointment is 
not invalid only because: 
   (a) the need for the appointment had not arisen;   (b) there was a defect or irregularity in connection with the appointment;   (c) the appointment had ceased to have effect; or 
  (d) the need to act had not arisen or had ceased. 
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  20.44 Qualifications for holding, or acting as, Disciplinary Tribunal 
 
 A person is not qualified to be appointe d under subregulation 20.42 (1) (“Disciplinary 
Tribunal: substantive appointments”), 20.43 (1) (“Disciplinary Tribunal: acting appointments”) or 20.45 (2) (“disclosure of inter est”) unless he or she is enrolled, and has for 
not fewer than 7 years been enrolled, as a legal practitioner. 
 
20.45 Disclosure of interest 
 
 (1) If a person constituting or acting as the Disciplinary Tribunal has or acquires an 
interest that could conflict with the prope r performance of his or her functions in 
relation to proceedings he or she is to hear, the person: 
   (a) must tell the parties to the proceedings about the interest; and   (b) must not perform those functions without the consent of the parties. 
 
 (2) If such a person is unable to perform hi s or her functions because of a conflict of 
interest, the Minister may in writing appoint another person to be the Disciplinary Tribunal for the purpose of conducting or completing those proceedings. 
  (3) A copy of the instrument of appointment must be published in the Official Journal . 
 
(4) A person so appointed may exercise a ll the powers and must perform all of the 
functions of the Disciplinary Tribunal  in relation to those proceedings.  
 
Chapter 21 Administration 
    
21.1 Patent Office and sub-offices 
 
 The hours of business of the Patent Office and each sub-office of the Patent Office are 
from 9 am to 5 pm on each day other than: 
 
  (a) a Saturday or a Sunday; or 
  (b) a public holiday:     (i) where the Office or sub-office is located; or    (ii) for the purposes of the Aust ralian Public Service in that place. 
 
21.2 Employees to whom Commissioner may delegate (Act s 209 (1)) 
 
 For subsection 209 (1) of the Act, the Commissioner may delegate all or any of the 
Commissioner’s powers or functions under th e Act, except the powers and functions under 
paragraphs 210 (a) and (c) of the Act, to an employee of the Patent Office: 
 
              (a) holding, or performing the duties of, the position of Examiner of Patents; or   (b) employed at any of the following levels:     (i) Executive level 1 or 2; 
   (ii) APS level 2, 3, 4, 5 or 6. 
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  Chapter 22 Miscellaneous  
 Part 1 Fees and costs  Division 1 Fees 
 
22.1 Fees generally 
 
 (1) A fee must be paid in such a manner as the Commissioner reasonably directs.  
 (2) If the Commissioner has directed that a co mplete application is to be treated as a 
provisional application, the amount by wh ich the fee payable on the filing of a 
complete application exceeds the fee payabl e on the filing of a provisional application 
must be credited towards the payment of the fee payable on the next filing of a complete application associated with the provisional application by the applicant 
concerned. 
 
22.2 General fees 
 
 (1) For the purposes of subsection 227 (1) of the Act (“fees”), there is payable to the 
Commissioner in respect of a matter specified in column 2 of an item of Part 1 or 2 in 
Schedule 7 a fee of the amount specified in column 3 of that item. 
  (2) In order to ascertain the amount of a fee payable under item 18 of Part 2 in 
Schedule 7, the period from the day on which a notice of opposition to the grant of an application for an extension of time is filed to the end of: 
 
              (a) if an application is ma de to the Tribunal for a review of a decision of the 
Commissioner — the day when the application is withdrawn or finally dealt with or determined; or 
              (b) in any other case — 21 days after the end of the day on which the 
Commissioner decides the application; 
  must not be taken into account. 
  (3) For the purposes of paragraph 89 (3) (b) of  the Act (“modified application of Act”): 
   (a) if a PCT application is treated as an application: 
 
                           (i) for a petty patent — the amount of the fee specified in item 2 of 
Part 2 in Schedule 7; or 
                           (ii) for a standard patent — the amounts of the fees specified in item 3 of 
that Part; 
   is, or are, payable in respect of the application; and 
 
              (b) the fee specified in item 2 or 3 of Part 2 in Schedule 7 is not payable in 
respect of a PCT application. 
 
22.2A Payment of fees other than renewal or continuation fees 
 
 (1) For paragraph 227 (5) (b) of the Act, the Commissioner must give the person the 
written notice about the payment of the f ee within 1 month after the fee became 
payable. 
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   (2) However, if the fee became payable af ter the commencement of Schedule 3 to the 
Intellectual Property Laws Amendment Act 1998 and before the commencement of 
this regulation, the Commissioner must gi ve the person the notice within 1 month 
after the commencement of this regulation. 
 
 (3) For paragraph 227 (5) (c) of the Act, if the Commissioner has given the notice in 
accordance with this regulation, the person must pay the fee within 1 month after the notice was given to the person. 
 
Note 1    Section 221 of the Act deals with giving documents. 
 
Note 2    Subsection 223 (2) of the Act and regulat ion 22.11 deal with extensions of time. 
 
22.3 General fees for international applications 
 
 (1) If: 
 
 (a) for the purposes of the PCT, the Patent Office is: 
    (i) a receiving Office; or    (ii) an International Searching Authority; or 
   (iii) an International Preliminary Examining Authority; and 
               (b) the Commissioner or the Patent Office is empowered by the PCT to charge a 
fee, other than a fee for the bene fit of the International Bureau; 
  for the purposes of subsection 227 (1) of the Act (“fees”), the amount of the fee 
payable to the Commissioner in respect of a matter specified in column 2 of an item 
of Part 3 in Schedule 7 is the amount specified in column 3 of that item. 
  (2) The fees specified in items 1 and 2 of  Part 3 in Schedule 7 are payable to the 
Commissioner within 1 month of filing an international application. 
 
 (3) The fee specified in item 4 of Part 3 in Schedule 7 is payable to the Commissioner on 
filing a demand for a preliminary examination under Article 31 of the PCT. 
 
22.4 Fees for international applications payable  for the benefit of the International Bureau 
  (1) Subject to subregulation (1A) if, for the purposes of the PCT, the Patent Office is: 
   (a) a receiving Office; or   (b) an International Searching Authority; or   (c) an International Preliminary Examining Authority;   for an international application, the amounts of the basic fee, designation fees and 
handling fee (payable, under the PCT, to  the Commissioner for the benefit of the 
International Bureau) for the application are as set out in Part 4 of Schedule 7. 
  (1A) The fee payable for international applica tions is reduced by 75% if the applicant, or 
each applicant, is: 
 
  (a) a natural person; and               (b) a national of, and resides in, a State the per capita national income of which is 
less than US $3,000. 
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   (1B) For the purposes of subregulation (1A), per capita national income  means the 
average per capita national income figure fo r the State that is used by the United 
Nations to determine its scale of assessments for the contributions payable for the years 1995, 1996 and 1997. 
 
 (1C) If an international application complies with item 4 of the Schedule of Fees to the 
PCT, the total international fee payable for the benefit of the International Bureau for 
the application is reduced by 200 Swiss francs. 
 
Note    Item 4 of the Schedule of Fees in the PCT is as follows: 
 
4. The total amount of the fees payable under items 1 and 2 (a) [ that is, the total of the basic fee 
and the designation fees ] is reduced by 200 Swiss francs if th e international a pplication is, in 
accordance with and to the extent provided for in the Administrative Instructions, filed on 
paper together with a copy thereof in electronic form. 
 
 (2) The Commissioner must, in accordance with the PCT, determine the currency in 
which a fee payable under this regulation is  payable and the exchange rate between 
Swiss currency and the currency so determined. 
  (3) The Commissioner must give notice of a determination in the Official Journal . 
 
 (4) A determination has effect on the date sp ecified in the determination for that purpose 
or on the date of notification of the determination in the Official Journal , whichever 
is later. 
 22.5 PCT Fund 
 
 Money paid as a fee to the Commissioner under s ubregulation 22.4 (1) (“ fees for international 
applications payable for the benefit of the International Bureau”): 
  (a) must be paid into the Trus t Fund kept under section 60 of the Audit Act 1901 (“Trust 
Fund”); and 
 (b) may be expended from the Fund for the purposes of the PCT, including the making of 
refunds and the remission of fees to the International Bureau. 
 
22.6 Exemption from fees 
 
 (1) The Commissioner may exempt a person from the payment of the whole or any part 
of a fee if the Commissioner is reasonably satis fied that the action is justified, having 
regard to all the circumstances. 
  (2) If acceptance of a patent request and comp lete specification has been delayed because 
of an error or omission on the part of an employee, the period that is, in the 
reasonable opinion of the Commissioner, equal to the period of delay that resulted from the error or omission is not, for the purposes of ascertaining the amount of a fee, to be taken into account. 
 22.7 Refund of certain fees 
 
 (1) Subject to subregulation (2), if:    (a) a complete application for a standard patent has been filed; and IP/N/1/AUS/P/6 
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                (b) the application is w ithdrawn before the specification becomes open to public 
inspection; 
  so much of the fee paid on the fili ng of the application as the Commissioner 
reasonably thinks fit may, on written applica tion made to him or her, be refunded. 
 
 (2) If the PCT requires a fee paid to the Commiss ioner to be refunded in whole or in part, 
that fee or that part of the fee must be refunded. 
  (3) If:  
              (a) a search fee or a preliminary examination fee is payable to an International 
Searching Authority or an International Preliminary Examining Authority; and 
  (b) the PCT provides for the refund of the fee in whole or in part; and               (c) that fee has been paid to the Commissioner; 
  he or she must determine in accordance with  the PCT to what extent that fee is to be 
refunded to the applicant and the fee must be refunded accordingly. 
 
Division 2 Costs 
 22.7A Proceedings to which this Division applies 
 
 This Division applies to pro ceedings before the Commissioner. 
 
22.8 Costs 
  (1) The Commissioner must not award costs in proceedings to which this Division 
applies, other than costs specified in Sche dule 8, unless each party to the proceedings 
has had the reasonable opportunity to make a submission on the matter of the award of those costs. 
  (2) The Commissioner may award an amount: 
 
               (a) for costs in respect of a matter specified in column 2 of an item of Part 1 in 
Schedule 8; or 
               (b) in respect of the expenses or allowances of a person in relation to proceedings 
to which this Division applies. 
 
 (3) An amount referred to in subregulation (2 ) must be taxed, allowed and certified, by 
an employee appointed by the Commissione r for that purpose, in accordance with: 
   (a) the amount specified in column 3 of that item; or   (b) Part 2 in Schedule 8; 
  as the case may be. 
  (4) A taxation is subject to review by the Commissioner.   
Part 2 Other matters 
   
22.9 Death of applicant or nominated person 
 
 The legal representative of a deceased applican t, nominated person or patentee who wishes: 
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                (a) in accordance with subsection 215 (1) of the Act (“death of applicant or 
nominated person”) to proceed with the application; or 
              (b) in accordance with subsect ion 215 (2) of the Act to ha ve the patent granted to 
him or her; or 
              (c) in accordance with sub section 215 (3) of the Act to have the patent amended 
by substituting for the name of the pate ntee the name of the person to whom 
the patent should have been granted; 
  must file the approved form and such other documents as the Commissioner 
reasonably considers necessary to support the request. 
 22.10 Address for service 
 
 (1) If provision is made in an approved form  to state an address for service, the person 
completing the form must state an address in Australia at which a document under the Act or these Regulations may be given to  him or her personally or to the person 
specified in the form as his or her representative. 
  (2) A person may file notice of a change of his or her address for service.   (3) If a notice of opposition is filed under regul ation 5.3 (“filing of opposition”), a person 
who has filed notice under subregulation (2) must serve a copy of the notice on each 
person interested in the opposition proceedings. 
  (4) If a person serves a document on a person other than the Commissioner, the first-
mentioned person must, as soon as practi cable after serving the document on the 
other person, file a notice of the service in the approved form together with a copy of 
the document served. 
 
22.11 Extension of time 
 
 (1) For the purposes of subsection 223 (2) of the Act (“extensions of time”), an 
application for an extension of time must be  in the approved form and have with it a 
declaration setting out the grounds on which the application is made. 
  (2) Notice of the grant of an extension of time must be published in the Official Journal . 
  (3) For the purposes of the definition of “relev ant act” in subsection 223 (11) of the Act, 
each of the following actions is prescribed: 
               (a) an action or step pr escribed in Chapter 5 (“opposition”), not being an action 
or step taken under regulation 5.3 (“f iling of opposition”) or paragraph 5.4 
(1) (a) (“filing of statement”); 
              (b) paying a fee in the 6 month  period stated in subregulation 13.3 (1A) 
or 13.6 (2); 
              (c) filing, during the term of  a standard patent as required by subsection 71 (2) of 
the Act, an application under subsection 70 (1) of the Act for an extension of the term of the patent. 
 22.12 Evidence 
 
 (1) If evidence is given in writing to the Commissioner or to the Patent Attorneys 
Disciplinary Tribunal for the purposes of the Act or these regulations, the evidence must be in the form of a declaration. IP/N/1/AUS/P/6 
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 (2) The Commissioner may:                (a) require a person who has made a declaration to appear before him or her to 
give evidence orally on oath in substitution for, or addition to, the evidence 
contained in the declaration; and 
  (b) allow the person to be cross-examined on the declaration.  
22.13 Declarations 
  (1) In this regulation: 
 
  diplomatic or consular officer  means a person who holds or performs the duties of 
any of the following offices of the Commonw ealth in a country other than Australia: 
 
  (a) ambassador; 
  (b) high commissioner;   (c) minister;   (d) chargè d’affaires;               (e) counsellor or second or third secretary at an embassy, high commission or 
other post; 
  (f) consul-general; 
  (g) consul;   (h) vice-consul.   (2) A declaration required by the Act or these Regulations to be given to the 
Commissioner must: 
               (a) be headed with the title of the matter in respect of which the declaration is 
made; and 
  (b) be expressed in the first person; and               (c) state the description and actual place of business or residential address and 
occupation of the declarant; and 
              (d) be divided into para graphs, each of which must be numbered consecutively 
and, as far as practicable, be confined to 1 subject; and 
              (e) show the name and a ddress of the person making the declaration and, if 
appropriate, the name of the pe rson on whose behalf it is made. 
 
 (3) A declaration may be made before:    (a) a magistrate; or   (b) a justice of the peace; or   (c) a commissioner for affidavits; or 
  (d) a commissioner for declarations; or 
  (e) a notary public; or               (f) a person before whom a statutory declaration may be made under the law of 
the State, Territory or foreign country where the declaration is made; or 
  (g) a diplomatic or consular officer. 
 
 (4) The name and title of the person before whom the declaration is made and the date 
when and the place where it was made mu st be stated in the declaration. 
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  22.14 Directions not otherwise prescribed 
 
 If the Commissioner reasonably believes that it is necessary for the proper prosecution or 
completion of proceedings for a person to perform an act, file a document or produce evidence that is not provided for by the Act or  these Regulations, the Commissioner may give 
notice to the person requiring him or her to perform the act, file the document or produce the 
evidence, specified  in the notice. 
 
22.15 Documents to be in English 
  (1)  An abstract, approved form or specification that is filed must be in English. 
  (2) Any other document that is filed, other th an a document that has been translated into 
English and has with it a related certificate of verification, must be in English. 
 22.16 Documents other than specifications and abstracts 
 
 (1) In this regulation: 
 
  document  does not include a specification or an abstract. 
 
 (2) If a document received at the Patent O ffice does not substantially comply with 
Schedule 3 or is not in accordance with wh ichever approved form is applicable, the 
Commissioner may treat the document: 
               (a) as not having been filed and return it to the person from whom it was 
received with a statement indicating how the document or form does not so 
comply or accord; or 
              (b) as having been filed, but  direct the person from whom it was received to do 
such things as are necessa ry to ensure that the document will so comply or 
accord. 
 
 (3) If the Commissioner returns a document un der paragraph (2) (a), he or she must 
return with the document any other document filed with it. 
  (4) If the Commissioner gives a direction under paragraph (2) (b) and the person to 
whom the direction was given does not comply  with that direction within 3 months 
from the day when it was given, the Commissioner must treat the document as not 
having been filed. 
  (5) Chapter 10 (“amendments”) does not appl y to a document to which this regulation 
applies. 
 22.17 Incapacity of certain persons 
 
 (1) In this regulation: 
 
  mental dysfunction  means a disturbance or defect, to a severely disabling degree, of 
perceptual interpretation, comprehension,  reasoning, learning, judgment, memory, 
motivation, or emotion. 
  (2) If a person is incapable of doing anythi ng required or permitted by the Act or these 
Regulations to be done because of infancy or of mental dysfunction or physical IP/N/1/AUS/P/6 
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  disability or disease, a court may, on the app lication of a person acting on behalf of 
the incapable person or of another person interested in the doing of the thing: 
   (a) do that thing; or 
 (b) appoint a person to do the thing; 
  in the name, and on behalf, of the incapable person. 
  (3) A thing done in the name of, and on beha lf of, an incapable person is taken to have 
been done by that person as if the person ha d not been incapable when the thing was 
done. 
 
22.18 Destruction of documents 
 
 (1) The Commissioner may order the destruc tion of documents relating to applications 
filed not less than 25 years before the date of the order. 
 
 (2) Subregulation (1) does not authorise the destruction of:    (a) the Register; or   (b) documents relating to patents in force; or               (c) documents considered by  the Commissioner, or the Director-General of the 
Australian Archives, to be of legal or historical interest. 
 
22.19 Copies of certain documents to be supplied 
 
 A copy of a document that: 
 
  (a) affects the ownership of a patent or licence; and   (b) has been witnessed;   must be filed by a person who seeks to have the Commissioner consider the 
document for the purposes of the Act or these regulations. 
 22.20 International applications and the Patent Office 
 
  If, for the purposes of the PCT, the Patent Office is:    (a) a receiving Office; or 
  (b) an International Searching Authority; or 
  (c) an International Preliminary Examining Authority;   the Commissioner and the Patent Office may perform the functions under the PCT of 
a receiving Office, an International Searching Authority or an International Preliminary Examining Authority, as the case requires, in relation to an international application. 
 
22.21 Protection or compensation of certain persons 
 
 (1) The following provisions of this regulation are prescribed for the purposes of 
subsections 41 (4) (“specifications: micro- organisms”), 150 (4) (“restoration of 
lapsed application”) and 223 (9) ( “extensions of time”) of the Act. 
  (2) Persons who availed themse lves of or exploited, or took definite steps by contract or 
otherwise to avail themselves of or exploit, inventions:  IP/N/1/AUS/P/6 
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                (a) in the case of inventi ons to which subsection 41 (4) of the Act applies — in 
the period mentioned in paragraph 41 (4) (c) of the Act; and 
              (b) in the case of inventio ns to which subsection 150 (4) of the Act applies — 
after the lapse of the applications  and before the day on which their 
restoration was notified in the Official Journal ; and 
              (c) in the case of inventio ns to which subsection 223 (9) of the Act applies — 
within the period of time extended under that subsection; 
  may apply, in the approved form, to the Commissioner for the grant of licences to 
exploit the inventions. 
 
 (3) An applicant for a licence must serve  a copy of the application on a person whose 
application or patent: 
   (a) was so restored; or   (b) is referred to in subsection 41 (4) of the Act; 
  and to such other persons as the Commissioner reasonably directs. 
  (4) A person on whom a copy of an applica tion has been served may oppose the grant of 
the licence. 
  (5) The Commissioner, if reasonably satisfied  that the application should be granted, 
must grant a licence to the applicant on such terms as the Commissioner thinks 
reasonable. 
 
22.22 Exercise by Commissioner of certain powers 
  (1) The Commissioner must, before exercising a discretionary power under the Act or 
these Regulations adversely to a person, give the person at least 10 days notice of the time when, and the place where, that person ma y be heard in relation to the exercise 
of the power. 
  (2) The Commissioner may exercise that power, if the person: 
 
  (a) informs the Commissioner that he or she does not wish to be heard; or   (b) does not attend the hearing; or               (c) being an applicant or patentee, requests the Commissioner to exercise the 
power of the Commissioner without the applicant or patentee being heard. 
 
 (3) A request:    (a) must be in the approved form; and   (b) may be accompanied by written submissions.  
 (4) The Commissioner must, after hearing the person, notify him or her of the decision. 
 
22.23 Hearings 
 
 (1) The Commissioner must give notice of the date, time and place of a hearing before 
him or her to each party to the hearing at  least 10 days before the day when the 
hearing is to begin. 
  (2) The Commissioner may adjourn a hearing from time to time or from place to place by 
notifying the parties to the hearing accordingly. IP/N/1/AUS/P/6 
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 (3) The Commissioner may hold a hearing:    (a) at which the parties appear before him or her in person; or               (b) in which a party participates by telephone or such other means of 
telecommunication as the Commissioner reasonably allows. 
  (4) If a party to a hearing does not intend to appear at the hearing, the party may make a 
submission in writing to the Commissioner before the hearing begins to which the Commissioner must have regard in reachin g his or her decision on the matter being 
heard as if: 
   (a) the party were present or otherw ise participating in the hearing; and 
              (b) the matter of the submission were presented by the party in the presence of 
the Commissioner. 
 
 (5) The Commissioner must, after hearing the person, notify him or her of the decision.  
22.24 Practice and procedure other th an for opposition proceedings 
 
 (1) Subject to these Regulations: 
 
              (a) if the Act or these Regulations authorise the Commissioner to hear and 
decide an application or matter that is not an opposition; or 
  (b) in a matter being decided on the motion of the Commissioner;   the practice and procedure to be followe d for the purposes of enabling the application 
or matter to be decided is to be determined by him or her. 
  (2) A person to be heard at a hearing may apply to the Commissioner in respect of the 
practice and procedure in relation to the hearing to be determined by the 
Commissioner. 
 22.25 Requirements cannot be comp lied with for reasonable cause 
 
  If, under these Regulations, a person is required to:                (a) sign a document, make a declaration or file or give the Commissioner a 
document or evidence; and 
              (b) the Commissioner is reasonably satisfied that the person cannot comply with 
the requirement; 
  the Commissioner may, subject to such conditions as he or she reasonably directs, 
dispense with the requirement. 
 22.26 Review of decisions 
 
 (1) In this regulation: 
 
  decision  has the same meaning as in the Administrative Appeals Tribunal Act 1975 . 
 
 (2) Application may be made to the Tribunal for review of a decision of:    (a) the Commissioner under the following provisions:   IP/N/1/AUS/P/6 
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                             (i) paragraph 3.24 (1) (b) (“Commissioner may request samples and 
viability statement”); 
                           (ii) subregulation 3.25 (2) (“request for Commissioner’s certificate 
authorising release of sample of a micro-organism”); 
   (iia) paragraph 4.3 (2) (b) (“pr escribed documents: public inspection”); 
   (iii) subregulation 5.5 (3) (“dismissal of opposition); 
   (iv) subregulation 5.6 (3) (“determination of opposition”); 
                           (v) subpara graph 6.2 (1) (b) (ii) (“prescribed period: grant of standard 
patent”); 
   (va) subregulation 13.4 (3); 
                           (vi) s ubregulation 22.21 (5) (“protecti on or compensation of certain 
persons”); or 
               (b) the Professional Standards Board for Patent and Trade Marks Attorneys 
under subregulation 20.21 (7) (“authorisation to bring proceedings against a 
registered patent attorney”); or 
              (c) the Patent Attorneys Disciplinary Tribunal under subregulation 20.23 (2), (4) 
or (5) (“decision of Di sciplinary Tribunal”). 
  (3) If the Commissioner gives a person affected by a decision referred to in 
subregulation (2) written notice of the making of the decision, the notice must include 
a statement to the effect that, subject to the Administrative Appeals Tribunal 
Act 1975 , application may be made to the Tribunal for review of that decision by or 
on behalf of the person whose interests are affected by it. 
  (4) Failure to comply with subregulation (3) in relation to a decision does not affect the 
validity of the decision. 
  (5) If the Tribunal reviews a decision of the Commissioner under subsection 224 (1) of 
the Act (“review of decisions”) and the decision is not affirmed, the Commissioner 
must publish a notice of the decision of the Tribunal in the Official Journal . 
 Chapter 23 Transitional and savings provisions    23.1 Saving: prohibition orders 
 
 Subsection 4 (2) of the 1952 Act continues in force. 
 
23.2 Delegation: certain matters referred to in this Chapter 
 
 Section 11 of the 1952 Act continues on and after the commencing day in respect of the 
exercise by the Commissioner of his or her pow ers and functions in relation to the operation 
of: 
 
 (a) subsection 234 (3) of the Act ( “applications under 1952 Act”); or 
 (b) a following provision of this Chapter.  
23.3 Opposition to grant: practice and procedure 
 
 (1) Division 1 of Part XIV and regulations 82 and 83A of the former patents Regulations 
continue to apply in relation to opposition to the grant of a standard patent on an application: 
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                  (a) to which subsecti on 234 (3) of the Act (“applications under 1952 Act”) 
refers; and 
  (b) acceptance of which has been  advertised under the 1952 Act. 
  (2) Chapter 5 of these Regulations (“oppos ition”) does not apply to opposition to 
an application to which subregulation (1) applies. 
  (3) Chapter 5 of these Regulations app lies to opposition to an application: 
   (a) to which subsection 234 (3) of the Act refers; and 
  (b) of which advertisement of acceptance has taken place under the Act. 
 
23.4 Certain opposition: practice and procedure 
 
 (1) If, before the commencing day: 
 
  (a) a matter is advertised in the Official Journal ; or 
  (b) a document is served on a person;   to enable opposition proceedings to be take n, other than in relation to the grant of a 
standard patent: 
  (c) the following provisions of the 1952 Act continue to apply: 
 
   (i) sections 82, 83, 84, 85 and 94;    (ii) subsections 160 (5) and (6); and    (d) the following provisions of the former patents Regulations continue to apply: 
 
                           (i) regulations 36, 39B, 39C, 39D, 48, 49, 50, 51, 52, 76, 77, 78, 82, 
83A and 92; 
   (ii) Divisions 1 and 2 of Part XIV.   (2) If provisions specified in subregulation (1) continue to apply: 
 
              (a) sections 104 (“amen dments by applicants and patentees”) and 223 
(“extensions of time”) of the Act; and 
              (b) Chapter 5 (“opposition” ) and regulations 22.21 (“protection or compensation 
of certain persons”), 22.22 (“exercise by Commissioner of certain powers”) 
and 22.23 (“hearings”) of these Regulations; 
  do not apply to the opposition refe rred to in that subregulation. 
 
23.5 Fees payable for certain matters relating to opposition 
 
 The fee payable in respect of opposition proceed ings of the kind mentioned in regulation 23.3 
(“opposition to grant: practice and procedure”)  or 23.4 (“certain opposition: practice and 
procedure”) is the fee that would have been payable if these Regulations applied to those 
proceedings. 
 
23.6 Certain delegations: opposition 
 
  The delegation of a person who, before the commencing day, was: 
   (a) the delegate of the Commissioner under the 1952 Act; and  IP/N/1/AUS/P/6 
 Page 95 
 
 
                (b) exercising the powers of the Commissioner in relation to a matter to which 
regulation 23.3 (“opposition to grant: practice and procedure”) or 23.4 (“certain opposition: practice and procedure”) applies; 
  continues in relation to the matter.  23.7 Certain undertakings 
 
 If an undertaking referred to in paragra ph 3.25 (4) (c) (“request for Commissioner’s 
certificate authorising release of sample of a micro-organism”) is given in respect of an application lodged under the 1952 Ac t, the reference to Chapter 5 of the Act (“opposition”) in 
subparagraph 3.25 (4) (c) (i) includes a reference to Part V of the 1952 Act. 
 
23.8 Restoration of lapsed applications or ceased patents 
 
 (1) If, before the commencing day: 
 
  (a) an application lapses under:     (i) section 47C or 47D of the 1952 Act; or    (ii) subregulation 7B (4) or (5) of the former patents Regulations; or 
 
              (b) a patent ceases because of failure to pay a prescribed fee within the 
prescribed time; 
  and an application is made for the rest oration of the lapsed application or ceased 
patent, as the case may be, under: 
  (c) subsection 47E (2) or 97 (1) of the 1952 Act; or 
  (d) subregulation 7B (6) of the former patents Regulations; 
  section 47E, subsection 97 (2) or (3) or section 98 of the 1952 Act or the prescribed 
provisions of the former patents Regulati ons, as the case requires, continues to apply 
in relation to that lapsed applicati on or ceased patent and the corresponding 
provisions of the Act and these Regulations do not so apply. 
 
 (2) There is payable to the Commissioner in respect of a lapsed application or ceased 
patent to which subregulation (1) applies a fee of the amount specified in column 3 of 
item 8 of Part 1 in Schedule 2 to  the former patents Regulations. 
  (3) In subregulation (1), prescribed provisions  means: 
 
  (a) regulations 16D, 16E, 16F, 41, 42, 43, 44, 82, 83A, 92; or   (b) Division 1 of Part XIV.  
23.9 Certain continuation and renewal fees 
  (1) If, before the commencing day: 
   (a) the second year after lodgment of  a complete specification ends; and 
              (b) the continuation fee pres cribed in respect of that year in relation to the 
specification is payable but has not been paid; 
  item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the second 
anniversary. 
  (2) If, before the commencing day:  IP/N/1/AUS/P/6 
Page 96  
 
    (a) the second year of a patent ends; and 
              (b) the renewal fee prescribed in respect of that year in relation to the patent is 
payable but has not been paid; 
  item 7 of Part 2 in Schedule 7 is taken to include a fee of $75 in respect of the second 
anniversary. 
 
23.10 Fee taken to have been paid 
 
  If:  
              (a) in respect of the lodging of an application for an extension of time, a fee 
specified in item 27 of Part 1 in Schedul e 2 to the former patents Regulations 
is paid in respect of a period referred to in subsection 54 (1B) of the 1952 Act; and 
  (b) the application has not been accepted before the commencing day; and 
              (c) the applicant is required to pay the fee specified in item 22 of Part 2 in 
Schedule 7 to these Regulations in  relation to the application; 
  the fee under item 22 is taken to have been paid in respect of the period referred to in 
paragraph (a). 
 
23.11 Supply of product referred to in section 117 of the Act 
 
 (1) If:                (a) a product to which section 117 of the Act (“infringement by supply of 
products”) applies is supplied by a person to another person before the 
commencing day; and 
              (b) the supply would not have infringed a patent under the 1952 Act before the 
commencing day; and 
              (c) the first-mentioned pe rson supplies the product to another person after the 
commencing day; 
  section 117 of the Act does not apply to the supply referred to in paragraph (c). 
 
 (2) In subregulation (1), a reference to the first-mentioned person includes:                (a) on the death of the pers on — the legal personal representative of the estate of 
the person who has died; or 
              (b) if the person becomes bankrupt — the person who becomes, under the 
Bankruptcy Act 1966 , the trustee in bankruptcy of the estate of the first-
mentioned person; or 
              (c) if a body corporate is  being wound up — the person appointed to be the 
liquidator of the body corporate; or 
              (d) if the person agrees to  dispose of a business relating to the supply of the 
product — a person who acquires that business, whether from the first-
mentioned person or from some other person. 
 
23.12 Certain withdrawn, abandoned or refused applications 
  (1) On and after the commencing day, section 142AA of the 1952 Act continues to apply 
to an application referred to in subsecti on 234 (2) of the Act (“applications under 
1952 Act”). 
  IP/N/1/AUS/P/6 
 Page 97 
 
 
   (2) Section 96 of the Act (“withdrawn, ab andoned or refused applications”) does not 
apply to an application to which subregulation (1) applies. 
 
23.13 Certain certificates of validity 
   If: 
               (a) a court certifies under section 169 of the 1952 Act in relation to the validity 
of a patent or of a claim; and 
  (b) the validity of the patent or claim is disputed on or after the commencing day; 
  the certificate referred to in paragraph (a) is taken to have been issued under 
subsection 19 (1) of the Act (“certificate of validity”). 
 
23.14 Certain action under the 1952 Act 
   If: 
               (a) a provision of the Ac t requires an act to be done under that or another 
particular provision of the Act; and 
  (b) the act was done under a corresponding provision of the 1952 Act;   that act is taken to have been done und er the provision referred to in paragraph (a) 
under which the act is required to be done. 
 
23.15 Amendment of petty patents 
 
 The complete specification of a petty pate nt granted under section 62A of the 1952 Act 
cannot be amended under the Act so as to include more than 1 claim. 
 
23.16 Certain applications under 1952 Act: time for acceptance 
 
 (1) This regulation applies to an inve ntion referred to in paragraph 45 (1) (b) 
(“examination”) or 48 (1) (a) (“modified exam ination”) of the Act that is, so far as 
claimed in any claim, the subject of: 
               (a) a claim of the complete specification in relation to an application for a 
standard patent referred to  in subparagraph 48 (3) (a) (i) of the 1952 Act; or 
              (b) the claim of the complete specification in relation to an application for a petty 
patent referred to in subparagra ph 48 (3) (a) (ii) of the 1952 Act; 
  the priority date of which is earlier than th e priority date of the first-mentioned claim. 
  (2) If, under paragraph 45 (1) (b) or 48 (1) (a ) of the Act, the Commissioner reports that 
the first-mentioned claim in subregulation (1) is a claim the priority date of which is 
later than the priority date of the claim referred to in paragraph (1) (a) or (b), he or 
she may defer acceptance of the applicati on and complete specification until the end 
of 3 months after: 
               (a) the date on which a pa tent was sealed on the application referred to in 
paragraph (1) (a) or (b); or 
  (b) the date on which that applicati on lapsed or was withdrawn or refused. 
 
23.17 PCT applications to which subsection 89 (5) of the Act does not apply 
 
 Subsection 89 (5) of the Act (“modified applica tion of Act”) does not apply to an application: IP/N/1/AUS/P/6 
Page 98  
 
   
              (a) to which subsection 234 (2) of the Act (“applications under 1952 Act”) 
applies; and 
              (b) that is a PCT applicati on in respect of which Australia has been elected under 
Chapter II of the PCT within the period  specified in Article 39 of the PCT; 
and 
              (c) in respect of which a filed Preliminary Examination Report made under the 
PCT reports that an amendment to the application goes beyond the disclosure 
in the relevant international application that has been filed. 
 23.18 Certain priority dates: saving 
 
 In the case of a claim of a specification:   (a) relating to a further application for a standard patent or for a petty patent under 
section 51 of the 1952 Act in respect of an invention disclosed in a provisional 
specification under that Act; or 
 (b) to which subsection 45 (2), (3), (3A) or (4A) of the 1952 Act applies; or  (c) to which subsection 191 (8) of the Statute Law (Miscellaneous Amendments) Act 
(No. 1) 1982 applies; 
 the priority date is determined under secti on 45 of the 1952 Act or subsection 191 (8) of the 
Statute Law (Miscellaneous Am endments) Act (No. 1) 1982 , as the case requires. 
 
23.19 Appointment of certain examiners 
 
 A person appointed under subregulation 16 (1) of the former attorneys Regulations as an 
examiner is taken to have been appointed under subregulation paragraph 20.6 (2) of these 
Regulations (“examination to be conducted”) as an examiner. 
 
23.20 Patent attorneys: continued application of certain provisions 
 
 (1) In this regulation:  
  prescribed person  means a person who has, before the commencing day: 
               (a) passed the examination in a subject specified in subregulation 10 (2) of the 
former attorneys Regulations; or 
              (b) been issued with a certificate under regulation 20A or 22 of the former 
attorneys Regulations; or 
  (c) met the requirements of regulation 21 of the former attorneys Regulations.   (2) Despite the repeal of the former attorn eys Regulations, regulation 18 of the Patent 
Attorneys Regulations (Amendment), being Statutory Rules 1989 No. 25, continues 
to apply to persons referred to in that regulation. 
  (3) Regulation 15 of the former attorneys Re gulations continues to apply to a person who 
is a prescribed person as if the reference to having passed the examination in a subject included a reference to being exempted  under subregulation 10A (1) of those 
Regulations from having to pass the examination in that subject. 
  (4) Regulations 20A and 22 of the former a ttorneys Regulations continue to apply to a 
prescribed person as if the reference to a certificate in those Regulations were a reference to the certificates referre d to in regulation 20.15 and 20.16.  IP/N/1/AUS/P/6 
 Page 99 
 
 
   
 (5) If a prescribed person was employed con tinuously on or after 1 May 1989 and before 
the commencing day for not less than 1 year, or for periods within a continuous period of 2 years together that total not less than 1 year, by a patent attorney as a technical assistant in the conduct of the practice of a patent attorney, the prescribed 
person is taken to have been employed fo r the prescribed period of employment for 
the purposes of paragraph 20.3 (d) (“requirements for registration”) of these Regulations. 
 
23.21 Patent Attorneys Professional Standard s Board: continuation of appointments 
 
 (1) A person elected under paragraph 5 (1) (b ) of the former attorneys Regulations as a 
member of the Patent Attorneys Professi onal Standards Board established under those 
Regulations is taken to have been elec ted under paragraph 20.32 (2) (b) of these 
Regulations (“establishment of Board”) as a member of the Patent Attorneys 
Professional Standards Board established under these Regulations. 
  (2) A person appointed under paragraph 5 (1) (c) of the former attorneys Regulations as a 
member of the Patent Attorneys Professi onal Standards Board established under those 
Regulations is taken to have been appoi nted under paragraph 20.32 (2) (c) of these 
Regulations as a member of the Patent Attorneys Professional Standards Board 
established under these Regulations. 
  (3) A member referred to in subregulation (1) or (2) holds office as a member of the 
Patent Attorneys Professional Standards Bo ard under these Regulations for the period 
that is, immediately before the commencing day, the remainder of the period of his or 
her office as a member of the Patent A ttorneys Professional Standards Board under 
the former attorneys Regulations. 
 
23.22 Secretary to Patent Attorneys Profession al Standards Board: continuation of 
appointment 
  The person appointed to be the Secretary to  the Patent Attorneys Professional Standards 
Board under subregulation 9 (1) of the former a ttorneys Regulations is taken to have been 
appointed to be the Secretary to the Pate nt Attorneys Professional Standards Board under 
subregulation 20.40 (1) of these Regulations (“Secretary to Board”). 
 23.23 Patent Attorneys Disciplinary Tribunal: continuation 
 
 The person constituting the Patent Attorneys Di sciplinary Tribunal under subregulation 26 (1) 
of the former attorneys Regulations is taken to  constitute the Patent Attorneys Disciplinary 
Tribunal under subregulation 20.42 (1) of these Regulations (“Disciplinary Tribunal: 
substantive appointments”). 
 
23.24 Matters begun under the former attorneys Re gulations not finally dealt with before the 
commencing day 
 
 These Regulations apply on and after the comme ncing day to a matter that was not finally 
dealt with before that day under the former atto rneys Regulations as if the matter had started 
under a corresponding provision of these Regulations. 
 IP/N/1/AUS/P/6 
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  23.25 Fees 
 
 (1) In this regulation: 
 
  continuation fee  means a continuation fee for the purposes of section 47D of the 
1952 Act. 
 
  renewal fee  means a renewal fee for the purposes of subsection 68 (2) of that Act. 
  (2) Subregulation 22.2 (1) (“general fees”) does not apply in respect of: 
 
  (a) a continuation fee in respect of a year; or   (b) a renewal fee in respect of a year of a patent;   that ends on or after the commencing day,  if the fee became payable, and was paid, 
before that day. 
 
 (3) If an application for a standard pa tent was accepted under section 52 or 52D of 
the 1952 Act before the commencing day, the fee payable for the sealing of that patent is the fee that was applicable to the sealing of the patent immediately before 
that day. 
 
 (4) In the case of a PCT application, if: 
               (a) a continuation fee in resp ect of an anniversary that occurs within the period 
of 9 months immediately preceding the commencing day; and 
              (b) the continuation f ee is not paid in the period referred to in 
subregulation 13.3 (1) but is paid wi thin 9 months after the anniversary 
concerned; 
  the prescribed period referred to in s ubregulation 13.3 (1) (“prescribed period: 
continuation fees”) is extended to the day on which the fee is paid. 
 
23.26 Certain actions and proceedings 
 
 (1) The 1952 Act applies to an action or proceeding made or started under that Act and 
not finally dealt with or determined before the commencing day: 
   (a) in which the validity of a patent is disputed; or 
  (b) concerning infringement of a patent. 
  (2) The 1952 Act applies to an action or proceeding in which the validity of a patent 
granted under the Patents Act 1990 on an application made under the 1952 Act is 
disputed.  
 23.27 Professional Standards Board for Patent and Trade Marks Attorneys 
 
 (1) In this regulation and regulation 23.28: 
 
  new Board  means the Professional Standards Board for Patent and Trade Marks 
Attorneys. 
 
  new Chapter 20  means Chapter 20 of the Patents Regulations as in force on and 
after 1 April 1998.  
  IP/N/1/AUS/P/6 
 Page 101 
 
 
    old Board  means the Patent Attorneys Professional Standards Board: 
               (a) established under Chapter 20 of the Patents Regulations before 1 April 1998; 
and 
  (b) as constituted at any time before that date.  
  old Chapter 20  means Chapter 20 of the Patents Regulations as in force 
before 1 April 1998. 
 
  unfinished business  means anything that could have been done by the old Board 
under old Chapter 20 about an application.  
  (2) This regulation applies to an app lication (including anyt hing accompanying the 
application) made under old Chapter 20 if: 
 
  (a) the application was made before 1 April 1998; and  
  (b) unfinished business was not done before that date.   (3) The application is taken to ha ve been made under new Chapter 20. 
  (4) The unfinished business may be finished by the new Board under new Chapter 20. 
 
 (5) Any act done, or decision made, by the old Board under old Chapter 20 has effect as 
if the act had been done, or decision had been made, by the new Board. 
  (6) Each certificate given by the old Board under old Chapter 20 is as valid as it would be 
if it had been given by the new Board under new Chapter 20. 
 
23.28 Continuing effect of certain complaints 
 
 (1) This regulation applies to a complaint in writing to the old Board made under Part 4 
of old Chapter 20 if: 
 
  (a) the complaint was made before 1 April 1998; and   (b) unfinished business was not done before that date. 
 
Note    The terms old Board , old Chapter 20  and unfinished business  are defined in regulation 23.27. 
 
 (2) The unfinished business may be finished by the new Board under Part 4 of new 
Chapter 20. 
 
Note    The terms new Board  and new Chapter 20  are defined in regulation 23.27. 
 
 (3) Any reply or further information sought by the old Board under regulation 20.20, but 
not given to the old Board before 1 April 1998, must be given to the new Board under 
regulation 20.20 as if the reply or furthe r information had been sought by the new 
Board. 
 
23.29 Patent attorney registration 
  A person who was, on 26 January 1999, register ed as a patent attorney under section 198 of 
the Act as in force on that date is taken to be registered under that section as in force on 27 January 1999. IP/N/1/AUS/P/6 
Page 102  
 
   
23.30 Patent attorney qualificatio ns and employment requirements 
 
 (1) A person who met the requirements of pa ragraph 198 (2) (c) of the Act as in force 
on 26 January 1999 is taken to meet the requirements of paragraph 20.3 (1) (a). 
 
 (2) A person who met the requirements of pa ragraph 198 (2) (d) of the Act as in force 
on 26 January 1999 is taken to meet the requirements of paragraph 20.3 (1) (b). 
  (3) A person who met the requirements of pa ragraph 198 (2) (e) of the Act as in force 
on 26 January 1999 is taken to meet the requirements of subregulation 20.3 (3). 
  (4) A period of employment that met the re quirements of paragraph 20.3 (d) as in force 
on 26 January 1999 can be counted as part of a period of employment for paragraph 20.3 (3) (b). 
 
23.31 Patent attorney examination requirements 
 
 (1) For a person who passed an examination,  or was exempted from having to pass the 
examination, for a subject mentioned in item 1, 2, 3 or 4 of Schedule 5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A (1) (b) is taken to 
commence on 27 January 1999. 
  (2) For a person who passed an examination,  or was exempted from having to pass the 
examination, for a subject mentioned in item 5, 6, 7 or 8 of Schedule 5 as in force on 26 January 1999, the period of 5 years for paragraph 20.3A (1) (b) is taken to 
commence on 27 January 1999. 
  (3) For a person who:                (a) was exempted from havi ng to pass an examination for the subjects mentioned 
in items 5, 6, 7 and 8 of Schedule 5 as in force on 26 January 1999; and 
              (b) had not sat for an examination for a subject mentioned in item 1, 2, 3 or 4 of 
Schedule 5 as in force on 26 January 1999; 
  the period of 5 years for paragraph 20.3A (1) (b) is taken to commence when the 
person meets the requirements for registration as a trade marks attorney. 
 
 (4) Subregulation (5) applies to a person  who has passed an examination, or been 
exempted from having to pass the examinati on, for at least 1 subject mentioned in 
Schedule 5 as in force on 26 January 1999. 
 
(5) A pass in, or an exemption from having to p ass, an examination for a subject mentioned 
in column 1 of the following table is taken to be a pass for paragraph20.3A (1) (a) in a 
topic group mentioned in column 2 of the table: 
 
Column 1 
Subject Column 2 
Topic group 
Legal Process Group A — Legal process and overview of 
intellectual property 
 
Patent Attorneys’ Practice, Part 2  Group B — Professional conduct  IP/N/1/AUS/P/6 
 Page 103 
 
 
   
Column 1 
Subject Column 2 
Topic group 
Trade Marks law of Australia and the 
Practice of the Trade Marks Office 
 Group C — Trade mark law 
 
Patent Attorneys’ Practice, Part 1 and Patent Attorneys’ Practice, Part 2  Group D — Trade mark practice 
Patent law of Australia and the Practice 
of the Patent Office  Group E — Patent law 
Patent Attorneys’ Practice, Part 1 and 
Patent Attorneys’ Practice, Part 2  Group F — Patent system 
Preparation of Specifications 
 Group G — Drafting patent specifications 
Validity and Infringement of Patents Gr oup H — Interpretation and validity of 
patent specifications  
Designs Law and Related Intellectual Property Laws of Australia and the Practice of the Designs Office 
 Group I — Designs 
 IP/N/1/AUS/P/6 
Page 104  
 
  Schedule 1 Budapest Treaty on the International Recognition of the 
Deposit of Microorganisms for the Purposes of Patent 
Procedure 
   (subregulation 1.4 (1)) 
    
TABLE OF PROVISIONS 
 
 
Introductory Provisions   
 Article 1: Establishment of Union  
 Article 2: Definitions  Chapter I: Substantive Provisions  
 Article 3: Recognition and Effect of the Deposit of Microorganisms  
 Article 4: New Deposit   Article 5: Export and Import Restrictions  
 Article 6: Status of International Depositary Authority  
 Article 7: Acquisition of the Status of International Depositary Authority  
 Article 8: Termination a nd Limitation of the Status of International Depositary 
Authority  
 Article 9: Intergovernmental I ndustrial Property Organisations  
Chapter II: Administrative Provisions  
 Article 10: Assembly  
 Article 11: International Bureau   Article 12: Regulations  
Chapter III: Revision and Amendment  
 Article 13: Revision of the Treaty  
 Article 14: Amendment of Certain Provisions of the Treaty  
Chapter IV: Final Provisions  
 Article 15: Becoming Party to the Treaty   Article 16: Entry Into Force of the Treaty   Article 17: Denunciation of the Treaty   Article 18: Signature and Languages of the Treaty   Article 19: Deposit of the Treaty; Transmitta l of Copies; Registration of the Treaty  
 Article 20: Notifications 
  IP/N/1/AUS/P/6 
 Page 105 
 
 
  BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF 
MICROORGANISMS FOR THE PURP OSES OF PATENT PROCEDURE 
 
Done at Budapest on April 28, 1977 , and amended on September 26, 1980 
 
INTRODUCTORY PROVISIONS 
 
Article 1 
Establishment of a Union  
 The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union for the 
international recognition of the deposit of microor ganisms for the purposes of patent procedure.  
 
Article 2 
Definitions  
 
For the purposes of this Treaty and the Regulations:   (i) references to a “patent” shall be construed as references to patents for inventions, inventors’ 
certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;  
 
(ii) “deposit of a microorganism” means, accord ing to the context in which these words appear, 
the following acts effected in acco rdance with this Treaty and the Regulations; the transmittal of a 
microorganism to an international depositary author ity, which receives and accepts it, or the storage 
of such a microorganism by the international deposit ary authority, or both the said transmittal and the 
said storage;  
 (iii) “patent procedure” means any administrative or judicial procedure relating to a patent application or a patent;   (iv) “publication for the purposes of patent pro cedure” means the official publication, or the 
official laying open for public inspection,  of a patent application or a patent;  
 (v) “intergovernmental industrial property organiza tion” means an organization that has filed a 
declaration under Article 9 (1);   
(vi) “industrial property office” means an authority of a Contracting State or an intergovernmental 
industrial property organization competent for the grant of patents;   (vii) “depositary institution” means an instituti on which provides for the receipt, acceptance and 
storage of microorganisms and the furnishing of samples thereof;   
(viii) “international depositary authority” means a depositary institution which has acquired the 
status of international depositary authority as provided in Article 7;  
 (ix) “depositor” means the natural person or legal entity transmitting a microorganism to an 
international depositary au thority, which receives and accepts it,  and any successor in title of the said 
natural person or legal entity;  
 (x) “Union” means the Union referred to in Article 1;   (xi) “Assembly” means the Assembly referred to in Article 10;  IP/N/1/AUS/P/6 
Page 106  
 
   
(xii) “Organization” means the World Intellectual Property Organization;   (xiii) “International Bureau” means the Internati onal Bureau of the Organization and, as long as it 
subsists, the United International Bureaux for th e Protection of Intellectual Property (BIRPI);  
 
(xiv) “Director General” means the Director General of the Organization;   (xv) “Regulations” means the Regula tions referred to in Article 12. 
 
CHAPTER I 
 
SUBSTANTIVE PROVISIONS 
 
Article 3 
Recognition and Effect of the Deposit of Microorganisms  
 
(1) (a) Contracting States which allow or require the deposit of microorganisms for the purposes of 
patent procedure shall recognise, for such purpos es, the deposit of a microorganism with any 
international depositary authority. Such recognition shall include the recognition of the fact and date 
of the deposit as indicated by the international depositary authority as well as the recognition of the 
fact that what is furnished as a sample is a sample of the deposited microorganism.  
 (b) Any Contracting State may require a copy of  the receipt of the deposit referred to in 
subparagraph (a), issued by the inte rnational depositary authority.  
 
(2) As far as matters regulated in this Treaty and the Regulations are concerned, no Contracting 
State may require compliance with requirements di fferent from or additional to those which are 
provided in this Treaty and the Regulations.   
Article 4 
New Deposit  
 
(1) (a) Where the international depositary aut hority cannot furnish samples of the deposited 
microorganism for any reason, in particular,   (i) here such microorganism is no longer viable, or  
 
(ii) where the furnishing of samples would require that they be sent abroad and the sending or the 
receipt of the samples abroad is prevented by export or import restrictions,  that authority shall, promptly after having noted its  inability to furnish samples, notify the depositor of 
such inability, indicating the cause thereof, and the depositor, subjec t to paragraph (2) and as provided 
in this paragraph, shall have the right to ma ke a new deposit of the microorganism which was 
originally deposited.  
 (b) The new deposit shall be made with the inte rnational depositary authority with which the 
original deposit was made, provided that:   
(i) it shall be made with another internationa l depositary authority where the institution with 
which the original deposit was made has ceased to have the status of international depositary 
authority, either entirely or in respect of th e kind of microorganism to which the deposited 
microorganism belongs, or where the internationa l depositary authority with which the original  IP/N/1/AUS/P/6 
 Page 107 
 
 
  deposit was made discontinues, temporarily or defini tively, the performance of its functions in respect 
of deposited microorganisms;   (ii) it may be made with another internationa l depositary authority in the case referred to in 
subparagraph (a) (ii).  
 
(c) Any new deposit shall be accompanied by a statement signed by the depositor alleging that the newly deposited microorganism is the same as th at originally deposited. If the allegation of the 
depositor is contested, the burden of proof sha ll be governed by the applicable law.  
 
(d) Subject to subparagraphs (a) to  (c) and (e), the new deposit shall be treated as if it had been 
made on the date on which the original deposit was made where all the preceding statements 
concerning the viability of the originally deposited microorganism indicated that the microorganism was viable and where the new deposit was made w ithin three months after the date on which the 
depositor received the notification refe rred to in subparagraph (a).  
 
(e) Where subparagraph (b) (i) applies and the de positor does not receive the notification referred 
to in subparagraph (a) within six months after the date on which the termination, limitation or 
discontinuance referred to in subparagraph (b) (i ) was published by the International Bureau, the 
three-month time limit referred to in subparagraph (d) shall be counted from the date of the said 
publication. 
 
(2) The right referred to in paragraph (1) (a) shall not exist where the deposited microorganism 
has been transferred to another international depos itary authority as long as that authority is in a 
position to furnish samples of such microorganism.   
Article 5 
Export and Import Restrictions  
 
Each Contracting State recognises that it is highly d esirable that, if and to the extent to which the 
export from or import into its territory of certain  kinds of microorganisms is restricted, such 
restriction should apply to microor ganisms deposited, or destined for deposit, under this Treaty only 
where the restriction is necessary in view of national security or the dangers for health or the 
environment.   
Article 6 
Status of International Depositary Authority  
 
(1) In order to qualify for the status of inte rnational depositary authority, any depositary 
institution must be located on the territory of a Co ntracting State and must benefit from assurances 
furnished by that State to the effect that the said institution complies and will continue to comply with 
the requirements specified in paragraph (2). Th e said assurances may be furnished also by an 
intergovernmental industrial property organization; in that case, the depositary institution must be 
located on the territory of a State member of the said organization.  
 (2) The depositary institution must, in its capac ity of international depositary authority:  
  (i) have a continuous existence;  
 
 (ii) have the necessary staff and facilities, as prescribed in the Regulations, to perform its 
scientific and administrative tasks under this Treaty;  
  (iii) be impartial and objective;  IP/N/1/AUS/P/6 
Page 108  
 
   
 (iv) be available, for the purposes of deposit,  to any depositor under the same conditions;  
  (v) accept for deposit any or certain kinds of  microorganisms, examine their viability and 
store them, as prescribed in the Regulations;  
 
 (vi) issue a receipt to the depositor, and any required viab ility statement, as prescribed in 
the Regulations;  
  (vii) comply, in respect of the deposited microorganisms, with the requirement of secrecy, 
as prescribed in the Regulations;  
  (viii) furnish samples of any deposited microorganism under the conditions and in 
conformity with the procedure prescribed in the Regulations.  
 
(3) The Regulations shall provide the measures to be taken:  
  (i) where an international depositary author ity discontinues, temporarily or definitively, 
the performance of its functions in respect of deposited microorganisms or refuses to accept any of the kinds of microorganisms which it should accept under the assurances furnished;  
 
 (ii) in case of the termination or limitation of the status of international depositary 
authority of an international depositary authority.  
 
Article 7 
Acquisition of the Status of International Depositary  Authority  
 
(1) (a) A depositary institution shall acquire the status  of international depositary authority by virtue 
of a written communication addressed to the Director General by the Contracting State on the territory of which the depositary institution is located and including a declaration of assurances to the effect 
that the said institution complies and will continue to comply with the requirements specified in 
Article 6 (2). The said status may be acquired also by virtue of a written communication addressed to 
the Director General by an intergovernmental i ndustrial property organisation and including the said 
declaration.  (b) The communication shall also contain information on the depositary institution as provided in 
the Regulations and may indicate the date on which the status of international depositary authority 
should take effect.   (2) (a) If the Director General finds that the communication includes the required declaration and 
that all the required information has been received,  the communication shall be promptly published by 
the International Bureau.  
 
(b) The status of international depositary au thority shall be acquired as from the date of 
publication of the communication or, where a date has been indicated under paragraph (1) (b) and 
such date is later than the date of publica tion of the communication, as from such date.  
 
(3) The details of the procedure under paragraphs  (1) and (2) are provided in the Regulations.  
  IP/N/1/AUS/P/6 
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  Article 8 
Termination and Limitation of the Status of International Depositary Authority 
 
(1) (a) Any Contracting State or any intergovernme ntal industrial property organization may request 
the Assembly to terminate, or to limit to certain kinds of microorganisms, any authority’s status of 
international depositary authority on the ground that the requirements specified in Article 6 have not 
been or are no longer complied with. However, such  a request may not be made by a Contracting 
State or intergovernmental industrial property organi zation in respect of an international depositary 
authority for which it has made the declara tion referred to in Article 7 (1) (a).  
 
(b) Before making the request under subparagr aph (a), the Contracting State or the 
intergovernmental industrial property organization sh all, through the intermediary of the Director 
General, notify the reasons for the proposed request to the Contracting State or the intergovernmental 
industrial property organization which has made the communication referred to in Article 7 (1) so that 
that State or organisation may, within six mont hs from the date of the said notification, take 
appropriate action to obviate the need for making the proposed request.  
 (c) Where the Assembly finds that the request is we ll founded, it shall decide to terminate, or to 
limit to certain kinds of microorganisms, the stat us of international depositary authority of the 
authority referred to in subparagraph (a). The decision of the Assembly shall require that a majority of 
two-thirds of the votes cast be in favour of the request.  
 
(2) (a) The Contracting State or intergovernmental  industrial property orga nization having made the 
declaration referred to in Article 7 (1) (a) may, by a communication addressed to the Director General, withdraw its declaration either entirely or  in respect only of certain kinds of microorganisms 
and in any event shall do so when and to the ex tent that its assurances are no longer applicable.  
 
(b) Such a communication shall, from the date pr ovided for in the Regulations, entail, where it 
relates to the entire declaration, the termination of the status of international depositary authority or, 
where it relates only to certain kinds of microorga nisms, a corresponding limitation of such status.  
 (3) The details of the procedure under paragraphs  (1) and (2) are provided in the Regulations.  
 
Article 9 
Intergovernmental Industrial Property Organizations  
 
(1) (a) Any intergovernmental organization to wh ich several States have entrusted the task of 
granting regional patents and of which all the member  States are members of the International (Paris) 
Union for the Protection of Industrial Property may file  with the Director General a declaration that it 
accepts the obligation of recognition provided for in Article 3 (1) (a), the obligation concerning the 
requirements referred to in Article 3 (2) and all th e effects of the provisions of this Treaty and the 
Regulations applicable to intergovernmental industr ial property organizations. If filed before the entry 
into force of this Treaty according to Article 16 (1), the declaration referred to in the preceding 
sentence shall become effective on th e date of the said entry into for ce. If filed after such entry into 
force, the said declaration shall become effective three months after its filing unless a later date has been indicated in the declaration. In the latter case,  the declaration shall take effect on the date thus 
indicated.  
(b) The said organization shall have the ri ght provided for in Article 3 (1) (b).  
 (2) Where any provision of this Treaty or of the Regulations affecting intergovernmental 
industrial property organizations is revised or am ended, any intergovernmental industrial property IP/N/1/AUS/P/6 
Page 110  
 
  organization may withdraw its declaration referred to  in paragraph (1) by notification addressed to the 
Director General. The withdrawal shall take effect:    (i) where the notification has been receive d before the date on which the revision or 
amendment enters into force, on that date;  
 
 (ii) where the notification has been received af ter the date referred to in (i), on the date 
indicated in the notification or, in the absen ce of such indication, three months after 
the date on which the notification was received.  
 
(3) In addition to the case referred to in paragr aph (2), any intergovernmental industrial property 
organization may withdraw its declaration referred to  in paragraph (1) (a) by notification addressed to 
the Director General. The withdrawal shall take eff ect two years after the date on which the Director 
General has received the notification. No notifica tion of withdrawal under this paragraph shall be 
receivable during a period of five years from the date on which the declaration took effect.  
 
(4) The withdrawal referred to in paragraph (2) or (3) by an intergovernmental industrial property 
organization whose communication under Article 7 (1 ) has led to the acquisition of the status of 
international depositary authority by a depositary inst itution shall entail the termination of such status 
one year after the date on which the Director Gene ral has received the notification of withdrawal.  
 
(5) Any declaration referred to in paragraph (1) (a), notification of withdrawal referred to in 
paragraph (2) or (3), assurances furnished under Ar ticle 6 (1), second sentence, and included in a 
declaration made in accordance with Article 7 (1) (a), request made under Article 8 (1) and 
communication of withdrawal referred to in Article  8 (2) shall require the express previous approval 
of the supreme governing organ of the intergovern mental industrial property organization whose 
members are all the States members of the said organization and in which decisions are made by the 
official representatives of the governments of such States.  
 
CHAPTER II 
 
ADMINISTRATIVE PROVISIONS 
 
Article 10 
Assembly  
 
(1) (a) The Assembly shall consist of the Contracting States.  
 
     (b) Each Contracting State shall be represente d by one delegate, who may be assisted by alternate 
delegates, advisors, and experts.  
      (c) Each intergovernmental industrial prop erty organization shall be represented by special 
observers in the meetings of the Assembly and any committee and working group established 
by the Assembly.  
      (d) Any State not member of the Union wh ich is a member of the Organization or of the 
International (Paris) Union for the Protection of Industrial Property and any intergovernmental organization specialised in the field of patents other than an 
intergovernmental industrial property organi zation as defined in Article 2 (v) may be 
represented by observers in the meetings of the As sembly and, if the Assembly so decides, in 
the meetings of any committee or working group established by the Assembly.  
 (2) (a) The Assembly shall:   IP/N/1/AUS/P/6 
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 (i) deal with all matters concerning the ma intenance and development of the Union and 
the implementation of this Treaty;  
  (ii) exercise such rights and perform such tasks as are specially conferred upon it or 
assigned to it under this Treaty;  
  (iii) give directions to the Director Ge neral concerning the preparations for revision 
conferences; 
 
 (iv) review and approve the reports and ac tivities of the Director General concerning the 
Union, and give him all necessary instructions concerning matters within the competence of the Union;  
  (v) establish such committees and working groups  as it deems appropria te to facilitate the 
work of the Union;  
  (vi) determine, subject to paragraph (1) (d ), which States other than Contracting States, 
which intergovernmental organizations ot her than intergovernmental industrial 
property organizations as defined in Ar ticle 2 (v) and which international non-
governmental organizations sha ll be admitted to its meetings  as observers and to what 
extent international depos itary authorities shall be admitted to its meetings as 
observers;  
  (vii) take any other appropriate action designed to further the objectives of the Union;   
 (viii) perform such other functions as are appropriate under this Treaty.  
      (b) With respect to matters which are of in terest also to other Unions administered by the 
Organization, the Assembly shall make its d ecisions after having heard the advice of the 
Coordination Committee of the Organization.  
 
(3) A delegate may represent, and vote in the name of, one State only.  
 (4) Each Contracting State shall have one vote.   (5) (a) One-half of the Contracting States shall constitute a quorum.  
 
     (b) In the absence of the quorum, the Asse mbly may make decisions but, with the exception of 
decisions concerning its own procedure, all such decisions shall take effect only if the quorum 
and the required majority are attained thr ough voting by correspondence as provided in the 
Regulations.  
 
(6) (a) Subject to Articles 8 (1) (c), 12 (4) and 14 (2 ) (b), the decisions of the Assembly shall require 
a majority of the votes cast.        (b) Abstentions shall not be considered as votes.   
(7) (a) The Assembly shall meet once in every second calendar year in ordinary session upon 
convocation by the Director General, preferably dur ing the same period and at the same place as the 
General Assembly of the Organization.   IP/N/1/AUS/P/6 
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       (b) The Assembly shall meet in extraordin ary session upon convocation by the Director General, 
either on his own initiative or at the request of one-fourth of the Contracting States.  
 (8) The Assembly shall adopt its own rules of procedure.   
Article 11 
International Bureau  
 
(1) The International Bureau shall:   
 (i) perform the administrative tasks concerning the Union, in particular such tasks as are 
specifically assigned to it under this Treaty and the Regulations or by the Assembly;  
  (ii) provide the secretariat of revision conf erences, of the Assemb ly, of committees and 
working groups established by the Assembly , and of any other meeting convened by 
the Director General and dealing with matters of concern to the Union.  
 (2) The Director General shall be the chief execu tive of the Union and shall represent the Union.  
 (3) The Director General shall convene all mee tings dealing with matters of concern to the 
Union.  
 
(4) (a) The Director General and any staff member designated by him shall participate, without the 
right to vote, in all meetings of the Assembly, the committees and working groups established by the 
Assembly, and any other meeting convened by the Director General and dealing with matters of 
concern to the Union. 
 
     (b) The Director General, or a staff member  designated by him, shall be ex officio secretary of 
the Assembly, and of the committees, working groups and other meeti ngs referred to in 
subparagraph (a).  
  
(5) (a) The Director General shall, in accordance with the directions of the Assembly, make the 
preparations for revision conferences.        (b) The Director General may consul t with intergovernmental and international non-
governmental organizations concerning the pr eparations for revision conferences.  
 
     (c) The Director General and persons designate d by him shall take part, without the right to vote, 
in the discussions at revision conferences.  
      (d) The Director General, or a staff member  designated by him, shall be ex officio secretary of 
any revision conference.  
 
Article 12 
Regulations  
 
(1) The Regulations provide rules concerning:  
 
 (i) matters in respect of which this Tr eaty expressly refers to the Regulations or 
expressly provides that they are or shall be prescribed;  
  (ii) any administrative requirements, matters or procedures;   IP/N/1/AUS/P/6 
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 (iii) any details useful in the implementation of this Treaty.   (2) The Regulations adopted at the same time as this Treaty are annexed to this Treaty.  
 
(3) The Assembly may amend the Regulations.  
 (4) (a) Subject to subparagraph (b ), adoption of any amendment of the Regulations shall require two-
thirds of the votes cast.   
     (b) Adoption of any amendment concerning the furnishing of samples of deposited 
microorganisms by the international depositary authorities shall require that no Contracting 
State vote against the proposed amendment.  
 (5) In the case of conflict between the provisions of  this Treaty and those of the Regulations, the 
provisions of this Treaty shall prevail.  
 
CHAPTER III 
 
REVISION AND AMENDMENT 
 
Article 13 
Revision of the Treaty  
 
(1) This Treaty may be revised from time to tim e by conferences of the Contracting States.  
 
 
(2) The convocation of any revision conference shall be decided by the Assembly.   (3) Articles 10 and 11 may be amended either  by a revision conference or according to 
Article 14.   
Article 14 
Amendment of Certain Provisions of the Treaty  
 
(1) (a) Proposals under this Article for the amendm ent of Articles 10 and 11 may be initiated by any 
Contracting State or by the Director General.  
 
     (b) Such proposals shall be communicated by  the Director General to the Contracting States at 
least six months in advance of their consideration by the Assembly.  
 (2) (a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.  
 
     (b) Adoption of any amendment to Article 10 shall require four-fifths of the votes cast; adoption 
of any amendment to Article 11 shall require three-fourths of the votes cast. 
 (3) (a) Any amendment to the Articles referred to in  paragraph (1) shall enter into force one month 
after written notifications of acceptance, effected  in accordance with their respective constitutional 
processes, have been received by the Director Gene ral from three-fourths of the Contracting States 
members of the Assembly at the time th e Assembly adopted the amendment.  
      (b) Any amendment to the said Articles thus  accepted shall bind all the Contracting States which 
were Contracting States at the time the amen dment was adopted by the Assembly, provided IP/N/1/AUS/P/6 
Page 114  
 
  that any amendment creating financial obliga tions for the said Contracting States or 
increasing such obligations shall bind only those Contracting States which have notified their 
acceptance of such amendment.  
      (c) Any amendment which has been accepte d and which has entered into force in accordance 
with subparagraph (a) shall bind all States which become Contracting States after the date on 
which the amendment was adopted by the Assembly.  
 
CHAPTER IV 
 
FINAL PROVISIONS 
 
Article 15 
Becoming Party to the Treaty  
 (1) Any State member of the International (Paris) Union for the Protection of Industrial Property 
may become party to this Treaty by:    (i) signature followed by the deposit of an instrument of ratification, or    (ii) deposit of an instrument of accession.  
 
(2) Instruments of ratification or accession shall be deposited with the Director General.   
Article 16 
Entry Into Force of the Treaty  
 
(1) This Treaty shall enter into force, with resp ect to the first five States which have deposited 
their instruments of ratification or accession, three m onths after the date on which the fifth instrument 
of ratification or accession has been deposited.   (2) This Treaty shall enter into force with respect to any other State three months after the date on 
which that State has deposited its instrument of ratification or accession unless a later date has been 
indicated in the instrument of ratification or accessi on. In the latter case, this Treaty shall enter into 
force with respect to that State on the date thus indicated.   
Article 17 
Denunciation of the Treaty  
 
(1) Any Contracting State may denounce this Tr eaty by notification addressed to the Director 
General.   (2) Denunciation shall take effect two years af ter the day on which the Director General has 
received the notification.  
 (3) The right of denunciation provided for in pa ragraph (1) shall not be exercised by any 
Contracting State before the expiration of five year s from the date on which it becomes party to this 
Treaty.  
 
(4) The denunciation of this Treaty by a Contracti ng State that has made a declaration referred to 
in Article 7 (1) (a) with respect to a depositary  institution which thus acquired the status of 
international depositary authority shall entail the term ination of such status one year after the day on 
which the Director General received the no tification referred to in paragraph (1).  IP/N/1/AUS/P/6 
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Article 18 
Signature and Languages of the Treaty  
 
(1) (a) This Treaty shall be signed in a single origin al in the English and French languages, both texts 
being equally authentic.  
      (b) Official texts of this Treaty shall be established by the Director General, after consultation 
with the interested Governments and within tw o months from the date of signature of this 
Treaty, in the other languages in which the Convention Establishing the World Intellectual 
Property Organization was signed.  
      (c) Official texts of this Treaty shall be established by the Director General, after consultation 
with the interested Governments, in the Ar abic, German, Italian, Japanese and Portuguese 
languages, and such other languages as the Assembly may designate.  
 
(2) This Treaty shall remain open for signatu re at Budapest until December 31, 1977.  
 
Article 19 
Deposit of the Treaty; Transmittal of Copies; Registration of the Treaty  
 (1) The original of this Treaty, when no longer open for signature, shall be deposited with the 
Director General.   (2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations to the Governments of all the States refe rred to in Article 15 (1), to the intergovernmental 
organizations that may file a declaration under Article  9 (1) (a) and, on request, to the Government of 
any other State.   (3) The Director General shall register this Tr eaty with the Secretariat of the United Nations.  
 (4) The Director General shall transmit two copies,  certified by him, of any amendment to this 
Treaty and to the Regulations to all Contracting States, to all intergovernmental industrial property 
organizations and, on request, to the Govern ment of any other State and to any other 
intergovernmental organization that may file  a declaration under Article 9 (1) (a).  
 
Article 20 
Notifications  
 
The Director General shall notify the Contracting States, the intergovernmental industrial property 
organizations and those States not members of th e Union which are members of the International 
(Paris) Union for the Protection of Industrial Property of:   
 (i) signatures under Article 18;  
  (ii) deposits of instruments of ratifi cation or accession under Article 15 (2);  
  (iii) declarations filed under Article 9 (1 ) (a) and notifications of withdrawal under 
Article 9 (2) or (3);  
  (iv) the date of entry into force of this Treaty under Article 16 (1);    (v) the communications under Articles 7 an d 8 and the decisions under Article 8;  IP/N/1/AUS/P/6 
Page 116  
 
   
 (vi) acceptance of amendments to this Treaty under Article 14 (3);    (vii) any amendment of the Regulations;   
 (viii) the dates on which amendments to the Tr eaty or the Regulations enter into force;  
  (ix) denunciations received under Article 17.  IP/N/1/AUS/P/6 
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  Schedule 1A Regulations under the Budapest Treaty on the 
International Recognition of the Deposit of 
Microorganisms for the Purpos es of Patent Procedure  
   (subregulation 1.4 (1)) 
   
TABLE OF PROVISIONS 
Rule 1 Abbreviated Expressions and Int erpretation of the Word “Signature”  
1.1 “Treaty” 
1.2 “Article” 1.3 “Signature” 
Rule 2 International Depositary Authorities  
2.1 Legal Status  
2.2 Staff and Facilities  
2.3 Furnishing of Samples  
Rule 3 Acquisition of the Status of  International Depositary Authority  
3.1 Communication  
3.2 Processing of the Communication  3.3 Extension of the List of Kinds of Microorganisms Accepted  
Rule  4 Termination or Limitation of the St atus of International Depositary Authority  
4.1 Request; Processing of Request  
4.2 Communication; Effective Date; Processing of Communication  4.3 Consequences for Deposits  
Rule  5 Defaults by the Int ernational Depositary Authority  
5.1 Discontinuance of Performance of  Functions in Respect of Deposited 
Microorganisms  
5.2 Refusal to Accept Certain Kinds of Microorganisms  
Rule   6 Making the Original Deposit or New Deposit  
6.1 Original Deposit  
6.2 New Deposit  
6.3 Requirements of the International Depositary Authority  
Rule 7 Receipt  
7.1 Issuance of Receipt  
7.2 Form; Languages; Signature  7.3 Contents in the Case of the Original Deposit  
7.4 Contents in the Case of the New Deposit  
7.5 Receipt in the Case of Transfer  7.6 Communication in the Case of the Scientific Description and/or Proposed 
Taxonomic Designation  
Rule  8 Later Indication of Amendment of  the Scientific Description and/or Proposed 
Taxonomic Designation  
8.1 Communication  
8.2 Attestation  IP/N/1/AUS/P/6 
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  Rule  9 Storage of Microorganisms  
9.1 Duration of the Storage  
9.2 Secrecy  
Rule 10 Viability Test and Statement  
10.1 Obligation to Test  10.2 Viability Statement  
Rule  11 Furnishing of Samples  
11.1 Furnishing of Samples to Interested Industrial Property Offices  
11.2 Furnishing of Samples to or with the Authorization of the Depositor  11.3 Furnishing of Samples to Parties Legally Entitled  
11.4 Common Rules  
11.5 Changes in Rules 11.1 and 11.3 when applying to International Applications  
Rule  12 Fees  
12.1 Kinds and Amounts  
12.2 Change in the Amounts 
Rule 12
bis Computation of Time Limits  
12bis.1 Periods Expressed in Years  
12bis.2 Periods Expressed in Months  
12bis.3 Periods Expressed in Days  
Rule  13 Publication by the International Bureau  
13.1 Form of Publication  
13.2 Contents  
Rule  14 Expenses of Delegations  
14.1 Coverage of Expenses  
Rule  15 Absence of Quorum in the Assembly  
15.1 Voting by Correspondence 
  IP/N/1/AUS/P/6 
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  REGULATIONS UNDER THE BUDAPEST TREATY ON THE  
INTERNATIONAL RECOGNITION OF THE 
DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE 
 
Adopted on April 28, 1977 and amended on January 20, 1981 
 
Rule 1 
Abbreviated Expressions and Interpret ation of the Word “Signature” 
 
1.1 “Treaty”  
In these Regulations, the word “Treaty” means the Budapest Treaty on the International Recognition 
of the Deposit of Microorganisms for the Purposes of Patent Procedure.   1.2 “Article”  
In these Regulations, the word “Article” refers  to the specified Article of the Treaty.  
 
1.3 “Signature”  
In these Regulations, whenever the word “signatur e” is used, it shall be understood that, where the 
law of the State on the territory of which an intern ational depositary authority is located requires the 
use of a seal instead of a signature, the said word sh all mean “seal” for the purposes of that authority.  
 
Rule 2 
International Depositary Authorities  
 
2.1 Legal Status  
Any international depositary authority may be a government agency, including any public institution 
attached to a public administration other than the central government, or a private entity.  
 2.2 Staff and Facilities   
The requirements referred to in Article 6 (2) (ii)  shall include in particular the following:  
      (i) the staff and facilities of any internationa l depositary authority must enable the said authority 
to store the deposited microorganisms in a manner which ensures that they are kept viable and 
uncontaminated;  
      (ii) any international depositary authority must, for the storage of microorganisms, provide for 
sufficient safety measures to minimize the risk of losing microorganisms deposited with it.  
 
2.3 Furnishing of Samples  
 The requirements referred to in Article 6 (2) (viii) sh all include in particular the requirement that any 
international depositary authority must furnish samp les of deposited microorganisms in an expeditious 
and proper manner.  
 
Rule 3 
Acquisition of the Status of International Depositary Authority  
 
3.1 Communication  
 
(a) The communication referred to in Article 7 (1 ) shall be addressed to the Director General, in 
the case of a Contracting State, through diplomatic channels or, in the case of an intergovernmental 
industrial property organisation, by its chief executive officer.   IP/N/1/AUS/P/6 
Page 120  
 
  (b) The communication shall:  
       (i) indicate the name and address of the depositary institution to which the 
communication relates;  
 
      (ii) contain detailed information as to the said institution’s capacity  to comply with the 
requirements specified in Article 6 (2), including information on its legal status, 
scientific standing, staff and facilities;   
       (iii) where the said depositary institu tion intends to accept for deposit only certain kinds 
of microorganisms, specify such kinds;  
       (iv) indicate the amount of any fees that the said institution will, upon acquiring the status 
of international depositary authority, char ge for storage, viability statements and 
furnishing of samples of microorganisms;  
 
      (v) indicate the official language or languages of the said institution;         (vi) where applicable, indicate the date referred to in Article 7 (1) (b).  
 3.2 Processing of the Communication  
 
If the communication complies with Article 7 (1) and Rule 3.1, it shall be promptly notified by the 
Director General to all Contracting States and inte rgovernmental industrial pr operty organizations and 
shall be promptly published by the International Bureau.   
3.3 Extension of the List of Kinds of Microorganisms Accepted  
The Contracting State or intergovernmental i ndustrial property organi zation having made the 
communication referred to in Article 7 (1) may, at a ny time thereafter, notify th e Director General that 
its assurances are extended to specified kinds of mi croorganisms to which, so far, the assurances have 
not extended. In such a case, and as far as the a dditional kinds of microorganisms are concerned, 
Article 7 and Rules 3.1 and 3.2 shall apply, mutatis mutandis .  
 
Rule 4 
Termination or Limitation of the Status of International Depositary Authority  
 
4.1 Request; Processing of Request  
 
(a) The request referred to in Article 8 (1) (a) shall be addressed to the Director General as 
provided in Rule 3.1 (a).   (b) The request shall:   
 (i) indicate the name and address of the inte rnational depositary au thority concerned;  
  (ii) where it relates only to certain kinds of microorganisms, specify such kinds;  
  (iii) indicate in detail the facts on which it is based.  
 
(c) If the request complies with paragraphs (a) a nd (b), it shall be promptly notified by the 
Director General to all Contracting States and in tergovernmental industrial property organizations.  
  IP/N/1/AUS/P/6 
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  (d) Subject to paragraph (e), the Assembly shall consider the request not earlier than six and not 
later than eight months from the notification of the request.   (e) Where, in the opinion of the Director General, respect of the time limit provided for in paragraph (d) could endanger the interests of act ual or potential depositors , he may convene the 
Assembly for a date earlier than the date of th e expiration of the six-month period provided for in 
paragraph (d).   (f) If the Assembly decides to termin ate, or to limit to certain kinds of microorganisms, the status 
of international depositary authority, the said deci sion shall become effective three months after the 
date on which it was made.  
 4.2 Communication; Effective Date; Processing of Communication  
 (a) The communication referred to in Article 8 (2 ) (a) shall be addressed to the Director General 
as provided in Rule 3.1 (a).  
 (b) The communication shall:    (i) indicate the name and address of the inte rnational depositary au thority concerned;  
 
 (ii) where it relates only to certain kinds of microorganisms, specify such kinds;  
  (iii) where the Contracting State or interg overnmental industrial property organization 
making the communication desires that the e ffects provided for in Article 8 (2) (b) 
take place on a date later than at the expira tion of three months from the date of the 
communication, indicate that later date.  
 (c) Where paragraph (b) (iii) applies, the effects provided for in Article 8 (2) (b) shall take place 
on the date indicated under that pa ragraph in the communication; otherwise, they shall take place at 
the expiration of three months from the date of the communication.   
(d) The Director General shall promptly notif y all Contracting States and intergovernmental 
industrial property organisations of any communi cation received under Article 8 (2) and of its 
effective date under paragraph (c ). A corresponding notice shall be promptly published by the 
International Bureau.   
4.3 Consequences for Deposits  
 In the case of a termination of limitation of the st atus of international depositary authority under 
Articles 8 (1), 8 (2), 9 (4) or 17 (4), Rule 5.1 shall apply, mutatis mutandis .  
 
Rule 5 
Defaults by the International Depositary Authority  
 
5.1 Discontinuance of Performance of Functions  in Respect of Deposited Microorganisms  
 (a) If any international depositary authority temporarily or definitively discontinues the 
performance of any of the tasks it should perform under the Treaty and these Regulations in relation 
to any microorganisms deposited with it, the Cont racting State or intergovernmental industrial 
property organization which, in respect of that  authority, has furnished the assurances under 
Article 6 (1) shall:   IP/N/1/AUS/P/6 
Page 122  
 
   (i) ensure, to the fullest extent possible, that samples of all such microorganisms are 
transferred promptly and without deteri oration or contamination from the said 
authority (“the defaulting authority”) to another international depositary authority 
(“the substitute authority”);  
 
 (ii) ensure, to the fullest extent possible, that all mail or other communications addressed 
to the defaulting authority, and all fil es and other relevant information in the 
possession of that authority, in respect of the said microorganisms are promptly transferred to the substitute authority;  
 
 (iii) ensure, to the fullest extent possible, th at the defaulting authority promptly notifies all 
depositors affected of the discontinuance of  the performance of its functions and the 
transfers effected;  
  (iv) promptly notify the Director General of the fact and the extent of the discontinuance 
in question and of the measures which have been taken by the said Contracting State 
or intergovernmental industrial prope rty organization under (i) to (iii).  
 (b) The Director General shall promptly notify the Contracting States and the intergovernmental 
industrial property organizations as well as the i ndustrial property offices of the notification received 
under paragraph (a) (iv); the notification of the Dir ector General and the notification received by him 
shall be promptly published by the International Bureau.  
 (c) Under the applicable patent procedure it may be required that the depositor shall, promptly 
after receiving the receipt referred to in Rule 7.5, notify to any industrial property office with which a 
patent application was filed with reference to the original deposit the new accession number given to 
the deposit by the substitute authority.  
 (d) The substitute authority shall retain in an appropriate form the accession number given by the 
defaulting authority, together with the new accession number.  
 (e) In addition to any transfer effected under para graph (a) (i), the defaulting authority shall, upon 
request by the depositor, transfer, as far as possibl e, a sample of any microorganism deposited with it 
together with copies of all mail or other communica tions and copies of all files and other relevant 
information referred to in paragraph (a) (ii) to an y international depositary authority indicated by the 
depositor other than the substitute authority, provided that the de positor pays any expenses to the 
defaulting authority resulting from the said transfer. The depositor shall pay the fee for the storage of 
the said sample to the international depo sitary authority indicated by him.  
 (f) On the request of any depositor affected, th e defaulting authority shall retain, as far as 
possible, samples of the microorganisms deposited with it.   5.2 Refusal to Accept Certain Kinds of Microorganisms  
 
(a) If any international deposita ry authority refuses to accept fo r deposit any of the kinds of 
microorganisms which it should accept under the assurances furnished, the Contracting State or intergovernmental industrial property organization whic h, in respect of that authority, has made the 
declaration referred to in Article 7 (1) (a) shall pr omptly notify the Director General of the relevant 
facts and the measures which have been taken.  
 (b) The Director General shall promptly notify the other Contracting States and intergovernmental industrial property organizations of the notification received under paragraph (a);  IP/N/1/AUS/P/6 
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  the notification of the Director General and the notification received by him shall be promptly 
published by the International Bureau.   
Rule 6 
Making the Original Deposit or New Deposit  
 
6.1 Original Deposit   
 (a) The microorganism transmitted by the deposito r to the international depositary authority 
shall, except where Rule 6.2 applies, be accompanie d by a written statement bearing the signature of 
the depositor and containing:  
  (i) an indication that the deposit is made under the Treaty and an undertaking not to 
withdraw it for the period specified in Rule 9.1;  
 
 (ii) the name and address of the depositor;  
  (iii) details of the conditions necessary for the cultivation of the microorganism, for its 
storage and for testing its viability and also, where a mixture of microorganisms is deposited, descriptions of the components of the mixture and at least one of the methods permitting the checking of their presence;  
 
 (iv) an identification reference (number, symbols, etc.) given by the depositor to the 
microorganism;  
  (v) an indication of the properties of the microorganism which are or may be dangerous 
to health or the environment, or an indica tion that the depositor is not aware of such 
properties.  
 (b) It is strongly recommended that the written st atement referred to in paragraph (a) should 
contain the scientific description and/or pr oposed taxonomic designation of the deposited 
microorganism.  
 
6.2 New Deposit   
 (a) Subject to paragraph (b), in the case of a new deposit made under Article 4, the 
microorganism transmitted by the depositor to th e international depositary authority shall be 
accompanied by a copy of the receipt of the previo us deposit, a copy of the most recent statement 
concerning the viability of the microorganism wh ich was the subject of the previous deposit 
indicating that the microorganism is viable and a written statement bearing the signature of the 
depositor and containing:    (i) the indications referred to in Rule 6.1 (a) (i) to (v);  
 
 (ii) a declaration stating the reason releva nt under Article 4 (1) (a) for making the new 
deposit, a statement alleging that the microor ganism which is the subject of the new 
deposit is the same as that which was the subject of the previous deposit, and an 
indication of the date on which the deposito r received the notification referred to in 
Article 4 (1) (a) or, as the case may be, the date of the publication referred to in 
Article 4 (1) (e);  
  (iii) where a scientific description and/or  proposed taxonomic designation was/were 
indicated in connection with the previ ous deposit, the most recent scientific IP/N/1/AUS/P/6 
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  description and/or proposed taxonomic designation as communicated to the 
international depositary authority with which the previous deposit was made.  
 (b) Where the new deposit is made with the inte rnational depositary authority with which the 
previous deposit was made, paragr aph (a) (i) shall not apply.  
 
(c) for the purposes of paragraphs  (a) and (b) and of Rule 7.4, “previous deposit” means,  
  (i) where the new deposit has been preceded  by one or more other new deposits: the 
most recent of those other new deposits;  
 
 (ii) where the new deposit has not been pre ceded by one or more other new deposits: the 
original deposit.  
 6.3 Requirements of the International Depositary Authority   
 
(a) Any international depositary authority may require:    (i) that the microorganism be deposited in the form and quantity necessary for the 
purposes of the Treaty and these Regulations;  
 
 (ii) that a form established by such aut hority and duly completed by the depositor for the 
purposes of the administrative procedures of such authority be furnished;  
  (iii) that the written statement referred to in  Rule 6.1 (a) or 6.2 (a) be drafted in the 
language, or in any of the languages, specified by such authority, it being understood 
that such specification must at least in clude the official language or languages 
indicated under Rule 3.1 (b) (v);  
  (iv) that the fee for storage referred to in Rule 12.1 (a) (i) be paid; and    (v) that, to the extent permitted by the app licable law, the depositor enter into a contract 
with such authority defining the liabilities of the depositor and the said authority.  
 (b) Any international depositary authority sha ll communicate any such requirements and any 
amendments thereof to the International Bureau.   
6.4 Acceptance Procedure   
 (a) The international depositary  authority shall refuse to accept the microorganism and shall 
immediately notify the depositor in writing of such refusal and of the reasons therefor:  
  (i) where the microorganism is not of a kind of microorganism to which the assurances 
furnished under Rule 3.1 (b ) (iii) or 3.3 extend;  
  (ii) where the properties of the microorganism are so exceptional that the international 
depositary authority is technically not in a position to perform the tasks in relation to 
it that it must perform under the Treaty and these Regulations;  
 
 (iii) where the deposit is received in a condition which clearly indicates that the 
microorganism is missing or which precludes for scientific reasons the acceptance of the microorganism.  
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  (b) Subject to paragraph (a), the international depositary authority shall accept the microorganism 
when all the requirements of Rule 6.1 (a) or 6.2 (a ) and Rule 6.3 (a) are complied with. If any of those 
requirements are not complied with, the internationa l depositary authority shall immediately notify the 
depositor in writing of that fact and invite him to comply with those requirements.   
(c) When the microorganism has been accepted as an  original or new deposit, the date of that 
original or new deposit, as the case may be, sha ll be the date on which the microorganism was 
received by the international depositary authority.   (d) The international depositary authority shall, on the request of the depositor and provided that 
all the requirements referred to in paragraph (b) are complied with, consider a microorganism, 
deposited before the acquisition by such  authority of the status of inte rnational depositary authority, to 
have been received, for the purposes of the Treaty, on the date on which such status was acquired.  
 
Rule 7 
Receipt  
 
7.1 Issuance of Receipt   
 
The international depositary author ity shall issue to the depositor, in respect of each deposit of 
microorganism effected with it or transferred to it, a receipt in attestation of the fact that it has 
received and accepted the microorganism.  
 7.2 Form; Languages; Signature   
 (a) Any receipt referred to in Rule 7.1 shall be established on a form called an “international 
form,” a model of which shall be established by the Director General in those languages which the 
Assembly shall designate.   (b) Any words or letters filled in the receipt in characters other than those of the Latin alphabet 
shall also appear therein transliterated in characters of the Latin alphabet.  
 
(c) The receipt shall bear the signature of the pe rson or persons having the power to represent the 
international depositary authority or that of any other official of that authority duly authorised by the 
said person or persons.   7.3 Contents in the Case of the Original Deposit  
 
Any receipt referred to in Rule 7.1 and issued in the case of an original deposit shall indicate that it is 
issued by the depositary institution in its capacity  of international deposita ry authority under the 
Treaty and shall contain at least the following indications:    (i) the name and address of the in ternational depositary authority;  
 
 (ii) the name and address of the depositor;    (iii) the date of the original deposit as defined in Rule 6.4 (c);   
 (iv) the identification reference (number, symbols, etc.) given by the depositor to the 
microorganism;  
  (v) the accession number given by the interna tional depositary authority to the deposit;  
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   (vi) where the written statement referred to  in Rule 6.1 (a) contains the scientific 
description and/or proposed taxonomic desi gnation of the microorganism, a reference 
to that fact.  
 7.4 Contents in the Case of the New Deposit  
 
Any receipt referred to in Rule 7.1 and issued in  the case of a new deposit effected under Article 4 
shall be accompanied by a copy of the receipt of the previous deposit (within the meaning of 
Rule 6.2 (c)) and a copy of the most recent stat ement concerning the viability of the microorganism 
which was the subject of the previous deposit (within  the meaning of Rule 6.2 (c)) indicating that the 
microorganism is viable, and shall at least contain:  
  (i) the name and address of the in ternational depositary authority;  
  (ii) the name and address of the depositor;  
 
 (iii) the date of the new depos it as defined in Rule 6.4 (c);  
  (iv) the identification reference (number, symbols, etc.) given by the depositor to the 
microorganism;  
 
 (v) the accession number given by the intern ational depositary authority to the new 
deposit;  
  (vi) an indication of the relevant reason and th e relevant date as stated by the depositor in 
accordance with Rule 6.2 (a) (ii);  
 
 (vii) where Rule 6.2 (a) (iii) applies, a refe rence to the fact that a scientific description 
and/or a proposed taxonomic designation has/have been indicated by the depositor;  
  (viii) the accession number given to the previous deposit (within the meaning of 
Rule 6.2 (c)).  
 
7.5 Receipt in the Case of Transfer  
 The international depositary authority to which samp les of microorganisms are transferred under Rule 
5.1 (a) (i) shall issue to the depositor, in respect of each deposit in relation with which a sample is 
transferred, a receipt indicating that it is issu ed by the depositary institution in its capacity of 
international depositary authority under the Treaty and containing at least:  
  (i) the name and address of the in ternational depositary authority;  
  (ii) the name and address of the depositor;  
 
 (iii) the date on which the transferred sample  was received by the international depositary 
authority (date of the transfer);  
  (iv) the identification reference (number, symbols, etc.) given by the depositor to the 
microorganism;  
  (v) the accession number given by the in ternational deposit ary authority;  
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   (vi) the name and address of the internati onal depositary authority from which the transfer 
was effected;  
  (vii) the accession number given by the intern ational depositary authority from which the 
transfer was effected;  
 
 (viii) where the written statement referred to in Rule 6.1 (a) or 6.2 (a) contained the 
scientific description and/or proposed taxonomic designation of the microorganism, 
or where such scientific description and/ or proposed taxonomic designation was/were 
indicated or amended under Rule 8.1 at a later date, a reference to that fact.  
 
7.6 Communication of the Scientific Descripti on and/or Proposed Taxonomic Designation  
 On request of any party entitled to receive a samp le of the deposited microorganism under Rules 11.1, 
11.2 or 11.3, the international depositary authority shall communicate to such party the most recent 
scientific description and/or proposed taxonomic desi gnation referred to in Rules 6.1 (b), 6.2 (a) (iii) 
or 8.1 (b) (iii).   
Rule 8 
Later Indication or Amendment of the Scientific Description and/or Propo sed Taxonomic Designation 
 8.1 Communication   
 (a) Where, in connection with the deposit of a mi croorganism, the scientific description and/or 
taxonomic designation of the microor ganism was/were not indicated, the depositor may later indicate 
or, where already indicated, may amend such description and/or designation.  
 
(b) Any such later indication or amendment sha ll be made in a written communication, bearing 
the signature of the depositor, addressed to the in ternational depositary aut hority and containing:  
  (i) the name and address of the depositor;   
 (ii) the accession number given by the said authority;  
  (iii) the scientific description and/or proposed taxonomic designation of the 
microorganism;  
 
 (iv) in the case of an amendment, the last preceding scientific descrip tion and/or proposed 
taxonomic designation.  
 8.2 Attestation   
 The international depositary authority shall, on the request of the depositor having made the 
communication referred to in Rule 8.1, deliver to hi m an attestation showing the data referred to in 
Rule 8.1 (b) (i) to (iv) and the date of receipt of such communication.   
Rule 9 
Storage of Microorganisms  
 
9.1 Duration of the Storage   
 Any microorganism deposited with an  international depositary authority shall be stored by such 
authority, with all the care necessary to keep it viab le and uncontaminated, for a period of at least five IP/N/1/AUS/P/6 
Page 128  
 
  years after the most recent request for the furnishi ng of a sample of the deposited microorganism was 
received by the said authority and, in any case, for a period of at least 30 years after the date of the deposit.   9.2 Secrecy  
 
No international depositary authority shall give information to anyone whether a microorganism has 
been deposited with it under the Treaty. Furthermor e, it shall not give any information to anyone 
concerning any microorganism deposited with it u nder the Treaty except to an authority, natural 
person or legal entity which is entitled to obtain a sample of the said microorganism under Rule 11 
and subject to the same conditions as provided in that Rule.  
 
Rule 10 
Viability Test and Statement 
 10.1 Obligation to Test   
 The international depositary author ity shall test the viability of each  microorganism deposited with it:  
  (i) promptly after any deposit referred to in Rule 6 or any transfer referred to in Rule 5.1;  
 
 (ii) at reasonable intervals, depending on  the kind of microorganism and its possible 
storage conditions, or at any time, if necessary for technical reasons;  
  (iii) at any time, on the request of the depositor.   
10.2 Viability Statement  
 (a) The international depositary authority shall issue a statement concerning the viability of the 
deposited microorganism:    (i) to the depositor, promptly after any de posit referred to in Rule 6 or any transfer 
referred to in Rule 5.1;  
  (ii) to the depositor, on his request, at any time after the deposit or transfer;  
  (iii) to any industrial property office, other authority, natural person or legal entity, other 
than the depositor, to whom or to whic h samples of the deposited microorganism 
were furnished in conformity with Rule 11, on his or its request, together with or at 
any time after such furnishing of samples.  
 (b) The viability statement shall indicate whether th e microorganism is or is no longer viable and 
shall contain:  
 
 (i) the name and address of the intern ational depositary authority issuing it;  
  (ii) the name and address of the depositor;   
 (iii) the date referred to in Rule 7.3 (iii)  or, where a new deposit or a transfer has been 
made, the most recent of the dates referred to in Rules 7.4 (iii) and 7.5 (iii);  
  (iv) the accession number given by the said authority;    IP/N/1/AUS/P/6 
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   (v) the date of the test to which it refers;  
  (vi) information on the conditions under wh ich the viability test has been performed, 
provided that the said information has been requested by the party to which the viability statement is issued and that the results of the test were negative.  
 
(c) In the cases of paragraph (a) (ii) and (iii), th e viability statement shall refer to the most recent 
viability test.   (d) As to form, languages and signature, Rule 7.2 shall apply, mutatis mutandis , to the viability 
statement.  
 (e) In the case of paragraph (a) (i) or where the re quest is made by an industrial property office, 
the issuance of the viability statement shall be free of charge. Any fee payable under Rule 12.1 (a) 
(iii) in respect of any other viability statement shall be chargeable to the party requesting the 
statement and shall be paid before or at the time of making the request.  
 
Rule 11 
Furnishing of Samples 
 
11.1 Furnishing of Samples to Interested Industrial Property Offices   
 
Any international depositary authority shall furnis h a sample of any deposited microorganism to the 
industrial property office of any Contracting Stat e or of any intergovernmental industrial property 
organization, on the request of such office, provi ded that the request shall be accompanied by a 
declaration to the effect that:  
 
 (i) an application referring to the deposit of that microorganism has been filed with that 
office for the grant of a patent and that th e subject matter of that application involves 
the said microorganism or the use thereof;  
  (ii) such application is pending before that  office or has led to the grant of a patent;  
 
 (iii) the sample is needed for the purposes of a patent procedure having effect in the said 
Contracting State or in the said organization or its member States;  
  (iv) the said sample and any information a ccompanying or resulting from it will be used 
only for the purposes of the said patent procedure.  
 11.2 Furnishing of Samples to or with the Authorisation of the Depositor  
 Any international depositary authority shall furn ish a sample of any deposited microorganism:  
 
 (i) to the depositor, on his request;  
  (ii) to any authority, natural person or le gal entity (hereinafter referred to as “the 
authorised party”), on the request of su ch party, provided that the request is 
accompanied by a declaration of the deposito r authorising the requested furnishing of 
a sample.  
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  11.3 Furnishing of Samples to Parties Legally Entitled  
 (a) Any international depositary authority shall furnish a sample of a ny deposited microorganism 
to any authority, natural person or legal entity (hereina fter referred to as “the certified party”), on the 
request of such party, provided that the request is made on a form whose contents are fixed by the 
Assembly and that on the said form the industrial property office certifies:  
  (i) that an application referring to the depos it of that microorganism has been filed with 
that office for the grant of a patent and th at the subject matter of that application 
involves the said microorganism or the use thereof;  
 
 (ii) that, except where the second phrase of (iii) applies, publication for the purposes of 
patent procedure has been effected by that office;  
  (iii) either that the certified party has a right to a sample of the microorganism under the 
law governing patent procedure before that office and, where the said law makes the 
said right dependent on the fulfilment of certain  conditions, that that office is satisfied 
that such conditions have actually been fulfilled or that the certified party has affixed 
his signature on a form before that office and that, as a consequence of the signature 
of the said form, the conditions for furnishing a sample to the certified party are deemed to be fulfilled in accordance with the law governing patent procedure before 
that office, where the certified party h as the said right under the said law prior to 
publication for the purposes of patent procedure by the said office and such publication has not yet been effected, the certification shall expressly state so and shall indicate, by citing it in the customar y manner, the applicable provision of the 
said law, including any court decision.  
 
(b) In respect of patents granted and published by any industrial property office, such office may from time to time communicate to any internatio nal depositary authority lists of the accession 
numbers given by that authority to the deposits of the microorganisms referred to  in the said patents. 
The international depositary authority shall, on the request of any authority, natural person or legal 
entity (hereinafter referred to as “the requesting pa rty”), furnish to it a sample of any microorganism 
where the accession number has been so communicated. In respect of deposited microorganisms 
whose accession numbers have been  so communicated, the said office shall not be required to provide 
the certification referred to in Rule 11.3 (a).   11.4 Common Rules   
 
(a) Any request, declaration, certification or co mmunication referred to in Rules 11.1, 11.2 
and 11.3 shall be    (i) in English, French, Russian or Spanis h where it is addressed to an international 
depositary authority whose official language  is or whose official languages include 
English, French, Russian or Spanish, respec tively, provided that, where it must be in 
Russian or Spanish, it may be instead filed in English or French and, if it is so filed, the International Bureau shall, on the request of the interested party referred to in the 
said Rules or the international depositary au thority, establish, promptly and free of 
charge, a certified translation into Russian or Spanish;  
 
 (ii) in all other cases, it shall be in English or French, provided that it may be, instead, in 
the official language or one of the offici al languages of the in ternational depositary 
authority.  
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  (b) Notwithstanding paragraph (a), where the requ est referred to in Rule 11.1 is made by an 
industrial property office whose official language is  Russian or Spanish, the said request may be in 
Russian or Spanish, respectively, and the International Bureau shall establish, promptly and free of 
charge, a certified translation into English or French , on the request of that office or the international 
depositary authority which received the said request.  
 
(c) Any request, declaration, certification or co mmunication referred to in Rules 11.1, 11.2 and 
11.3 shall be in writing, shall bear a signature and shall be dated.  
 (d) Any request, declaration or certification refe rred to in Rules 11.1, 11.2 and 11.3 (a) shall 
contain the following indications:  
  (i) the name and address of the industrial property office making the request, of the 
authorised party or of the certified party, as the case may be;  
 
 (ii) the accession number given to the deposit;  
  (iii) in the case of Rule 11.1, the date and nu mber of the application or patent referring to 
the deposit;  
  (iv) in the case of Rule 11.3 (a), the indi cations referred to in (iii) and the name and 
address of the industrial property office which has made the certification referred to 
in the said Rule.  
 (e) Any request referred to in Rule 11.3 (b ) shall contain the following indications:  
 
 (i) the name and address of the requesting party;  
  (ii) the accession number given to the deposit.   (f) The container in which the sample furnished is  placed shall be marked by the international 
depositary authority with the accession number given to the deposit and shall be accompanied by a 
copy of the receipt referred to in Rule 7, an in dication of any properties of the microorganism which 
are or may be dangerous to health or the e nvironment and, upon request, an indication of the 
conditions which the international depositary authority employs for the cultivation and storage of the 
microorganism.   
(g) The international depositary authority having fu rnished a sample to any interested party other 
than the depositor shall promptly notify the depositor in writing of that fact, as well as of the date on 
which the said sample was furnished and of the name  and address of the industrial property office, of 
the authorised party, of the certified party or of th e requesting party, to whom or to which the sample 
was furnished. The said notification shall be accompan ied by a copy of the pertinent request, of any 
declarations submitted under Rules 11.1 or 11.2 (ii) in connection with the said request, and of any 
forms or requests bearing the signature of the re questing party in accordance with Rule 11.3.  
 (h) The furnishing of samples referred to in Ru le 11.1 shall be free of charge. Where the 
furnishing of samples is made under Rule 11.2 or 11. 3, any fee payable under Rule 12.1 (a) (iv) shall 
be chargeable to the depositor, to the authorised part y, to the certified party or to the requesting party, 
as the case may be, and shall be paid before or at the time of making the said request.  
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  11.5 Changes in Rules 11 .1 and 11.3 when Applying to International Applications   
 Where an application was filed as an internationa l application under the Patent Cooperation Treaty, 
the reference to the filing of the application with  the industrial property office in Rules 11.1 (i) and 
11.3 (a) (i) shall be considered a reference to the d esignation, in the international application, of the 
Contracting State for which the industrial prope rty office is the “designated Office” within the 
meaning of that Treaty, and the certification of pub lication which is required by Rule 11.3 (a) (ii) 
shall, at the option of the industrial property offi ce, be either a certification of international 
publication under the said Treaty or a certification of publication by the industrial property office.   
Rule 12 
Fees 
 
12.1 Kinds and Amounts   
 
(a) Any international depositary authority may, with respect to the procedure under the Treaty 
and these Regulations, charge a fee:    (i) for storage;    (ii) for the attestation referred to in Rule 8.2;  
 
 (iii) subject to Rule 10.2 (e), first senten ce, for the issuance of viability statements;  
  (iv) subject to Rule 11.4 (h), first sentence, for the furnishing of samples;   
 (v) for the communication of information under Rule 7.6.  
 (b) The fee for storage shall be for the whole duration of the storage of the microorganism as 
provided in Rule 9.1.   (c) The amount of any fee shall not vary on account of the nationality or residence of the 
depositor or on account of the nationality or residence of the authority, natural person or legal entity 
requesting the issuance of a viability statement or furnishing of samples.   12.2 Change in the Amounts  
 
(a) Any change in the amount of the fees charged by any international depositary authority shall 
be notified to the Director General by the Contr acting State or intergovernmental industrial property 
organization which made the declaration referred to in  Article 7 (1) in respect of that authority. The 
notification may, subject to paragraph (c), contain an indication of the date from which the new fees 
will apply.   
(b) The Director General shall promptly notif y all Contracting States and intergovernmental 
industrial property organizations of any notificati on received under paragraph (a ) and of its effective 
date under paragraph (c); the notification of the Di rector General and the notification received by him 
shall be promptly published by the International Bureau.   
(c) Any new fees shall apply as of the date indicat ed under paragraph (a), provided that, where 
the change consists of an increase in the amounts of  the fees or where no date is so indicated, the new 
fees shall apply as from the thirtieth day following th e publication of the change by the International 
Bureau.    IP/N/1/AUS/P/6 
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  Rule 12bis 
Computation of Time Limits 
 
12bis. 1 Periods Expressed in Years   
 
When a period is expressed as one year or a certain number of years, computation shall start on the 
day following the day on which the relevant event occu rred, and the period shall expire in the relevant 
subsequent year in the month having the same na me and on the day having the same number as the 
month and the day on which the said event occurred, provided that if the relevant subsequent month 
has no day with the same number the period shall expire on the last day of that month.  
 
12bis. 2 Periods Expressed in Months   
 When a period is expressed as one month or a cert ain number of months, computation shall start on 
the day following the day on which the relevant even t occurred, and the period shall expire in the 
relevant subsequent month on the day which has th e same number as the day on which the said event 
occurred, provided that if the relevant subsequent  month has no day with the same number the period 
shall expire on the last day of that month.   12
bis. 3 Periods Expressed in Days   
 
When a period is expressed as a certain number of days, computation shall start on the day following 
the day on which the relevant event occurred, and the period shall expire on the day on which the last 
day of the count has been reached.   
Rule 13 
Publication by the International Bureau 
 
13.1 Form of Publication  
 Any publication by the International Bureau referre d to in the Treaty or these Regulations shall be 
made in the monthly periodical of the International Bureau referred to in the Paris Convention for the 
Protection of Industrial Property.  
 13.2 Contents   
 (a) At least in the first issue of each year of the said periodical, an up-to-date list of the 
international depositary authorities sh all be published, indicating in respect of each such authority the 
kinds of microorganisms that may be deposited with it and the amount of the fees charged by it.   (b) Full information on any of the following facts shall be published once, in the first issue of the 
said periodical published after the occurrence of the fact:   
 (i) any acquisition, termination or limitation of the status of international depositary 
authority, and the measures taken in connec tion with that termination or limitation;  
  (ii) any extension referred to in Rule 3.3;   
 (iii) any discontinuance of the functions of  an international depositary authority, any 
refusal to accept certain kinds of microorganisms, and the measures taken in connection with such discontinuance or refusal;  
  (iv) any change in the fees charged by an international depositary authority;  IP/N/1/AUS/P/6 
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 (v) any requirements communicated in  accordance with Rule 6.3 (b) and any 
amendments thereof.  
 
Rule 14 
Expenses of Delegations  
 
14.1 Coverage of Expenses  
 The expenses of each delegation participating in any session of the Assembly and in any committee, 
working group or other meeting dea ling with matters of concern to the Union shall be borne by the 
State or organisation which has appointed it.   
Rule 15 
Absence of Quorum in the Assembly 
 
15.1 Voting by Correspondence  
 (a) In the case provided for in Article 10 (5) (b), the Director General shall communicate any 
decision of the Assembly (other than decisions re lating to the Assembly’s own procedure) to the 
Contracting States which were not represented when the decision was made and shall invite them to 
express in writing their vote or abstention within a period of three months from the date of the 
communication.  
 (b) If, at the expiration of the said period, the number of Contracting States having thus expressed 
their vote or abstention attains the number of Cont racting States which was lacking for attaining the 
quorum when the decision was made, that decision sha ll take effect provided that at the same time the 
required majority still obtains.   IP/N/1/AUS/P/6 
 Page 135 
 
 
  Schedule 2  Patent Cooperation Treaty 
   (subregulation 1.4 (2)) 
   
TABLE OF PROVISIONS 
 
Preamble    
Introductory Provisions   
Article 1: Establishment of a Union  
Article 2: Definitions  
Chapter I: International Application and International Search   
Article 3: The International Application  
Article 4: The Request  
Article 5: The Description  
Article 6: The Claims  Article 7: The Drawings  
Article 8: Claiming Priority  
Article 9: The Applicant  
Article 10: The Receiving Office  
Article 11: Filing Date and Effects of the International Application  
Article 12: Transmittal of the International A pplication to the International Bureau and 
the International Searching Authority  
Article 13: Availability of Copy of the Inte rnational Application to Designated Offices  
Article 14: Certain Defects in the International Application  
Article 15: The International Search  
Article 16: The International Searching Authority  
Article 17: Procedure Before the International Searching Authority  
Article 18: The International Search Report  
Article 19: Amendment of the Claims Before the International Bureau  
Article 20: Communication to Designated Offices  Article 21: International Publication  
Article 22: Copy, Translation, and Fee, to Designated Offices  
Article 23: Delaying of National Procedure  
Article 24: Possible Loss of Effect in Designated States  IP/N/1/AUS/P/6 
Page 136  
 
  Article 25: Review By Designated Offices  
Article 26: Opportunity to Correct Before Designated Offices  
Article 27: National Requirements  
Article 28: Amendment of the Claims, the Description, and the Drawings, Before 
Designated Offices  
Article 29: Effects of the International Publication  
Article 30: Confidential Nature of  the International Application  
Chapter II: International Preliminary Examination   
Article 31: Demand for Internati onal Preliminary Examination  
Article 32: The International Preliminary Examining Authority  
Article 33: The International Preliminary Examination  
Article 34: Procedure Before the Interna tional Preliminary Examining Authority  
Article 35: The International Preliminary Examination Report  
Article 36: Transmittal, Translation, a nd Communication, of the International 
Preliminary Examination Report  
Article 37: Withdrawal of Demand or Election  
Article 38: Confidential Nature of the International Preliminary Examination  
Article 39: Copy, Translation, and Fee, to Elected Offices  
Article 40: Delaying of National Ex amination and Other Processing  
Article 41: Amendment of the Claims, the Description, and the Drawings, Before 
Elected Offices  
Article 42: Results of National Examination in Elected Offices  
Chapter III: Common Provisions   
Article 43: Seeking Certain Kinds of Protection  
Article 44: Seeking Two Kinds of Protection  Article 45: Regional Patent Treaties  
Article 46: Incorrect Translation of the International Application  
Article 47: Time Limits  
Article 48: Delay in Meeting Certain Time Limits  
Article 49: Right to Practice Before International Authorities   IP/N/1/AUS/P/6 
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Chapter IV: Technical Services   
Article 50: Patent Information Services  
Article 51: Technical Assistance  
Article 52: Relations with Other Provisions of the Treaty  
Chapter V: Administrative Provisions   
Article 53: Assembly  
Article 54: Executive Committee  
Article 55: International Bureau  
Article 56: Committee for Technical Cooperation  
Article 57: Finances  
Article 58: Regulations  
Chapter VI: Disputes   
Article 59: Disputes  
Chapter VII: Revision and Amendment  
Article 60: Revision of the Treaty  
Article 61: Amendment of Certain Provisions of the Treaty  
Chapter VIII: Final Provisions   
Article 62: Becoming Party to the Treaty  
Article 63: Entry into Force of the Treaty  
Article 64: Reservations  Article 65: Gradual Application  
Article 66: Denunciation  
Article 67: Signature and Languages  
Article 68: Depositary Functions  
Article 69: Notifications  
 IP/N/1/AUS/P/6 
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  PATENT COOPERATION TREATY 
 
Done at Washington June 19, 1970 
amended on October 2, 1979 and modified on February 3, 1984 
 
  The Contracting States,  
   Desiring to make a contribution to the progress of science and technology,     Desiring to perfect the legal protection of inventions,  
 
  Desiring to simplify and render more economical the obtaining of protection for inventions where 
protection is sought in several countries,     Desiring to facilitate and accelerate access by the public to the technical information contained in 
documents describing new inventions,  
   Desiring to foster and accelerate the economic  development of developing countries through the 
adoption of measures designed to increase the effici ency of their legal systems, whether national or 
regional, instituted for the protection of inven tions by providing easily accessible information on the 
availability of technological solutions applicable to their special needs and by facilitating access to the 
ever expanding volume of modern technology,  
   Convinced that cooperation among nations will gr eatly facilitate the attainment of these aims,  
 Have concluded the present Treaty.  
 
Introductory Provisions 
 
Article 1 
Establishment of a Union 
 
(1) The States party to this Treaty (hereinafter called “the Contracting States”) constitute a Union 
for cooperation in the filing, searching, and examin ation, of applications for the protection of 
inventions, and for rendering special technical servi ces. The Union shall be known as the International 
Patent Cooperation Union.   
(2) No provision of this treaty shall be interpreted as diminishing the rights under the Paris 
Convention for the Protection of Industrial Property of any national or resident of any country party to 
that Convention.  
 
Article 2 
Definitions 
 
For the purposes of this Treaty and the Regulati ons and unless expressly stated otherwise:  
  (i) “application” means an application for the protection of an invention; references to an 
“application” shall be construed as references to ap plications for patents for inventions, inventors’ 
certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates 
of addition, and utility certificates of addition;    IP/N/1/AUS/P/6 
 Page 139 
 
 
   (ii) references to a “patent” shall be cons trued as references to patents for inventions, 
inventors’ certificates, utility certificates, utility mode ls, patents or certificates of addition, inventors’ 
certificates of addition, and utility certificates of addition;    (iii) “national patent” means a patent granted by a national authority;  
 
 (iv) “regional patent” means a patent gran ted by a national or an intergovernmental 
authority having the power to grant patent s effective in more than one State;  
  (v) “regional application” means an  application for a regional patent;  
 
 (vi) references to a “national application” sh all be construed as refe rences to applications 
for national patents and regional patents, other than applications filed under this Treaty;  
  (vii) “international application” means an application filed under this Treaty;  
 
 (viii) references to an “application” shall be construed as referenc es to international 
applications and national applications;    (ix) references to a “patent” shall be c onstrued as references to  national patents and 
regional patents;  
 
 (x) references to “national law” shall be c onstrued as references to  the national law of a 
Contracting State or, where a regional application or  a regional patent is involved, to the treaty 
providing for the filing of regional applicati ons or the granting of regional patents;  
 
 (xi) “priority date”, for the purpo ses of computing time limits, means:  
               ( a) where the international application contains a priority claim under Article 8, 
the filing date of the application whose priority is so claimed;  
               ( b) where the international application contains several priority claims under 
Article 8, the filing date of the earliest application whose priority is so 
claimed;  
 
(c) where the international application does not contain any priority claim under 
Article 8, the international filing date of such application;  
 
 (xii) “national Office” means the government authority of a Contracting State entrusted with the granting of patents; references to a “na tional Office” shall be construed as referring also to 
any intergovernmental authority which several States have entrusted with the task of granting regional 
patents, provided that at least one of those States  is a Contracting State, and provided that the said 
States have authorized that authority to assume the obligations and exercise the powers which this 
Treaty and the Regulations provide for in respect of national Offices;  
  (xiii) “designated Office” means the national Offi ce of or acting for the State designated by 
the applicant under Chapter I of this Treaty;   
 (xiv) “elected Office” means the national Office of or acting for the State elected by the 
applicant under Chapter II of this Treaty;    (xv) “receiving Office” means the national O ffice or the intergovernmental organization 
with which the international application has been filed;  IP/N/1/AUS/P/6 
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 (xvi) “Union” means the Interna tional Patent Cooperation Union;  
  (xvii) “Assembly” means the Assembly of the Union;   
 (xviii) “Organization” means the World Intellectual Property Organization;  
  (xix) “International Bureau” means the Intern ational Bureau of the Organization and, as 
long as it subsists, the United International Bur eaux for the Protection of Intellectual Property 
(BIRPI);  
 
 (xx) “Director General” means the Director  General of the Organization and, as long as 
BIRPI subsists, the Director of BIRPI.   
CHAPTER I 
 
International Application and International Search 
 
Article 3 
The International Application 
 (1) Applications for the protection of inventions in any of the Contracting States may be filed as 
international applications under this Treaty.   (2) An international application shall contain, as specified in this Treaty and the Regulations, a 
request, a description, one or more claims, one or more drawings (where required), and an abstract.  
 
(3) The abstract merely serves the purpose of te chnical information and cannot be taken into 
account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.   (4) The international application shall:  
 
 (i) be in a prescribed language;    (ii) comply with the prescribed physical requirements;   
 (iii) comply with the prescribed requirement of unity of invention;  
  (iv) be subject to the payment of the prescribed fees. 
 
Article 4 
The Request 
 
(1) The request shall contain:    (i) a petition to the effect that the internati onal application be processed according to this 
Treaty;  
 
 (ii) the designation of the Contracting State or States in which protection for the invention is desired on the basis of the interna tional application (“designated States”); if for any 
designated State a regional patent is available a nd the applicant wishes to obtain a regional patent 
rather than a national patent, the request shall so  indicate; if, under a treaty concerning a regional  IP/N/1/AUS/P/6 
 Page 141 
 
 
  patent, the applicant cannot limit his application to certain of the States party to that treaty, 
designation of one of those States and the indication of the wish to obtain the regional patent shall be 
treated as designation of all the States party to that treaty; if, under the national law of the designated State, the designation of that State has the effe ct of an application for a regional patent, the 
designation of the said State shall be treated as an i ndication of the wish to obtain the regional patent;  
 
 (iii) the name of and other prescribed data c oncerning the applicant a nd the agent (if any);  
  (iv) the title of the invention;   
 (v) the name of and other prescribed data concerning the inventor where the national law 
of at least one of the designated States requires that  these indications be furnished at the time of filing 
a national application. Otherwise, the said indications  may be furnished either in the request or in 
separate notices addressed to each d esignated Office whose national la w requires the furnishing of the 
said indications but allows that they be furnished at  a time later than that of the filing of a national 
application.  
 (2) Every designation shall be subject to the pa yment of the prescribed fee within the prescribed 
time limit.   (3) Unless the applicant asks for any of the other kinds of protection refe rred to in Article 43, 
designation shall mean that the desired protection c onsists of the grant of a patent by or for the 
designated State. For the purposes of this pa ragraph, Article 2 (ii)  shall not apply.  
 (4) Failure to indicate in the request the name a nd other prescribed data concerning the inventor 
shall have no consequence in any designated Stat e whose national law requires the furnishing of the 
said indications but allows that they be furnished at  a time later than that of the filing of a national 
application. Failure to furnish the said indications  in a separate notice shall have no consequence in 
any designated State whose national law does not require the furnishing of the said indications.  
 
Article 5 
The Description 
 
The description shall disclose the invention in a manner sufficiently clear and complete for the 
invention to be carried out by a person skilled in the art.  
 
Article 6 
The Claims 
 
The claim or claims shall define the matter for which protection is sought. Claims shall be clear and 
concise. They shall be fully supported by the description.  
 
Article 7 
The Drawings 
 
(1) Subject to the provisions of paragraph (2) ( ii), drawings shall be required when they are 
necessary for the understanding of the invention.   
(2) Where, without being necessary for the unders tanding of the invention, the nature of the 
invention admits of illustration by drawings:    (i) the applicant may include such drawings in  the international application when filed,  
 IP/N/1/AUS/P/6 
Page 142  
 
   (ii) any designated Office may require that the applicant file such drawings with it within 
the prescribed time limit. 
 
Article 8 
Claiming Priority 
 
(1) The international application may contain a declaration, as prescribed in the Regulations, 
claiming the priority of one or more earlier applica tions filed in or for any country party to the Paris 
Convention for the Protection of Industrial Property.   
(2) (a) Subject to the provisions of subparagraph ( b), the conditions for, and the effect of, any 
priority claim declared under paragraph (1) shall be  as provided in Article 4 of the Stockholm Act of 
the Paris Convention for the Protection of Industrial Property.        (b) The international application for which the priori ty of one or more earlier applications filed in 
or for a Contracting State is claimed may contain the designation of that State. Where, in the 
international application, the priority of one or mo re national applications f iled in or for a designated 
State is claimed, or where the priority of an in ternational application havi ng designated only one State 
is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by 
the national law of that State.  
 
Article 9 
The Applicant 
 
(1) Any resident or national of a Contracting St ate may file an international application.  
 
(2) The Assembly may decide to allow the resident s and the nationals of any country party to the 
Paris Convention for the Protection of Industrial Prope rty which is not party to this Treaty to file 
international applications.   (3) The concepts of residence and nationality, a nd the application of those concepts in cases 
where there are several applicants or where the ap plicants are not the same for all the designated 
States, are defined in the Regulations.  
 
Article 10 
The Receiving Office 
 
The international application shall be filed with the prescribed receiving Office, which will check and 
process it as provided in this Treaty and the Regulations.  
 
Article 11 
Filing Date and Effects of the International Application 
 (1) The receiving Office shall accord as the interna tional filing date the date of receipt of the 
international application, provided that that Office has found that, at the time of receipt:    (i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,  
 
 (ii) the international applicati on is in the prescribed language,  
  (iii) the international application cont ains at least the following elements:  
  IP/N/1/AUS/P/6 
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    ( a) an indication that it is intended as an international application,  
   ( b) the designation of at least one Contracting State,  
 
 ( c) the name of the applicant, as prescribed,  
 
  ( d) a part which on the face of it appears to be a description,  
   ( e) a part which on the face of it appears to be a claim or claims.  
 
(2) (a) If the receiving Office finds that the internationa l application did not, at the time of receipt, 
fulfil the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the 
applicant to file the required correction.        (b) If the applicant complies with the invitation,  as provided in the Regulations, the receiving 
Office shall accord as the international filing date the date of receipt of the required correction.  
 (3) Subject to Article 64 (4), any international application fulfilling the requirements listed in 
items (i) to (iii) of paragraph (1) and accorded an in ternational filing date shall have the effect of a 
regular national application in each designated Stat e as of the international filing date, which date 
shall be considered to be the actual filing date in each designated State.  
 
(4) Any international application fulfilling the requi rements listed in items (i) to (iii) of paragraph 
(1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the 
Protection of Industrial Property.  
 
Article 12 
Transmittal of the International Application to the International Bureau and the International 
Searching Authority 
 
(1) One copy of the international application sha ll be kept by the receiving Office (“home copy”), 
one copy (“record copy”) shall be transmitted to the International Bureau, and another copy (“search 
copy”) shall be transmitted to the competent In ternational Searching Authority referred to in 
Article 16, as provided in the Regulations.   (2) The record copy shall be co nsidered the true copy of the international application.  
 
(3) The international application shall be considered withdrawn if  the record copy has not been 
received by the International Bureau within the prescribed time limit.  
 
Article 13 
Availability of Copy of the Interna tional Application to Designated Offices 
 
(1) Any designated Office may ask the Internati onal Bureau to transmit to it a copy of the 
international application prior to the communication provided for in Article 20, and the International 
Bureau shall transmit such copy to the designate d Office as soon as possible after the expiration of 
one year from the priority date.   
(2) (a) The applicant may, at any time, transmit a c opy of his international application to any 
designated Office.   IP/N/1/AUS/P/6 
Page 144  
 
       (b) The applicant may, at any time, ask the Inte rnational Bureau to transmit a copy of his 
international application to any designated Office,  and the International Bureau shall transmit such 
copy to the designated Office as soon as possible.        (c) Any national Office may notify the Internationa l Bureau that it does not wish to receive 
copies as provided for in subparagraph ( b), in which case that subparagraph shall not be applicable in 
respect of that Office.  
 
Article 14 
Certain Defects in the International Application 
 
(1) ( a) The receiving Office shall check whether the international applica tion contains any of 
the following defects, that is to say:    (i) it is not signed as provided in the Regulations;  
 
 (ii) it does not contain the prescribed indications concerning the applicant;    (iii) it does not contain a title;    (iv) it does not contain an abstract;  
 
 (v) it does not comply to the extent provi ded in the Regulations with the prescribed 
physical requirements.  
      (b) If the receiving Office finds any of the said defect s, it shall invite the applicant to correct the 
international application within the prescribed time  limit, failing which that application shall be 
considered withdrawn and the receiving Office shall so declare.   (2) If the international application refers to draw ings which, in fact, are not included in that 
application, the receiving Office shall notify the applicant accordingly and he may furnish them 
within the prescribed time limit and, if he does, th e international filing date shall be the date on which 
the drawings are received by the receiving Office. Ot herwise, any reference to the said drawings shall 
be considered non-existent.   (3) (a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under 
Article 3 (4) (iv) have not been paid, or no fee prescr ibed under Article 4 (2) has been paid in respect 
of any of the designated States, the international application shall be considered withdrawn and the 
receiving Office shall so declare.        (b) If the receiving Office finds that the fee prescr ibed under Article 4 (2) has been paid in 
respect of one or more (but less than all) desi gnated States within the prescribed time limit, the 
designation of those States in respect of which it ha s not been paid within the prescribed time limit 
shall be considered withdrawn and the receiving Office shall so declare.  
 (4) If, after having accorded an international filin g date to the international application, the 
receiving Office finds, within the prescribed time limit,  that any of the requirements listed in items (i) 
to (iii) of Article 11 (1) was not complied with at that date, the said application shall be considered 
withdrawn and the receiving Office shall so declare.  
  IP/N/1/AUS/P/6 
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  Article 15 
The International Search 
 
(1) Each international application shall be the subject of international search.  
 
(2) The objective of the international search is to discover relevant prior art.  
 (3) International search shall be made on the basis of the claims, with due regard to the 
description and the drawings (if any).   
(4) The International Searching Authority referred to in Article 16 shall endeavour to discover as 
much of the relevant prior art as its facilities perm it, and shall, in any case, consult the documentation 
specified in the Regulations.   (5) (a) If the national law of the Contracting State so permits, the applicant who files a national 
application with the national Office of or acting for such State may, subject to the conditions provided 
for in such law, request that a sear ch similar to an international search  (“international-type search”) be 
carried out on such application.        (b) If the national law of the Contracting State so  permits, the national Office of or acting for 
such State may subject any national application f iled with it to an international-type search.  
 
     (c) The international-type search shall be carried  out by the International Searching Authority 
referred to in Article 16 which would be compet ent for an international search if the national 
application were an international application and were filed with the Office referred to in 
subparagraphs ( a) and ( b). If the national application is in  a language which the International 
Searching Authority considers it is not equipped to  handle, the international-type search shall be 
carried out on a translation prepared by the a pplicant in a language prescribed for international 
applications and which the International Sear ching Authority has undertaken to accept for 
international applications. The national applicati on and the translation, when required, shall be 
presented in the form prescribed for international applications.  
 
Article 16 
The International Searching Authority 
 
(1) International search shall be carried out by an International Searching Authority, which may 
be either a national Office or an intergovernment al organization, such as the International Patent 
Institute, whose tasks include the establishing of docu mentary search reports on prior art with respect 
to inventions which are the subject of applications.   (2) If, pending the establishment of a single Intern ational Searching Authority, there are several 
International Searching Authorities, each receiving O ffice shall, in accordance with the provisions of 
the applicable agreement referred to in paragraph (3) ( b), specify the International Searching 
Authority or Authorities competent for the searching of international applica tions filed with such 
Office.   (3) (a) International Searching Authorities shall be appointed by the Assembly. Any national Office 
and any intergovernmental organization satisfying the requirements referred to in subparagraph ( c) 
may be appointed as International Searching Authority.  
 (b) Appointment shall be conditional on the consen t of the national Office or intergovernmental 
organization to be appointed and the conclusion of  an agreement, subject to approval by the 
Assembly, between such Office or organization a nd the International Bureau. The agreement shall IP/N/1/AUS/P/6 
Page 146  
 
  specify the rights and obligations of the parties, in particular, the formal undertaking by the said 
Office or organization to appl y and observe all the common rules of international search.  
 (c) The Regulations prescribe the minimum requirements, particularly as to manpower and 
documentation, which any Office or organization must  satisfy before it can be appointed and must 
continue to satisfy while it remains appointed.  
 (d) Appointment shall be for a fixed period of tim e and may be extended for further periods.  
 (e) Before the Assembly makes a decision on the appointment of any national Office or 
intergovernmental organization, or on the extension of its appointment, or before it allows any such 
appointment to lapse, the Assembly shall hear the interested Office or organization and seek the 
advice of the Committee for Technical Cooperation re ferred to in Article 56 once that Committee has 
been established.  
 
Article 17 
Procedure Before the Interna tional Searching Authority 
 
(1) Procedure before the International Searching Au thority shall be governed by the provisions of 
this Treaty, the Regulations, and the agreement whic h the International Bureau shall conclude, subject 
to this Treaty and the Regulations, with the said Authority.  
 
(2) (a) If the International Searching Authority considers  
  (i) that the international application relate s to a subject matter which the International 
Searching Authority is not required, under the Regulations, to search, and in the 
particular case decides not to search, or  
  (ii) that the description, the claims, or th e drawings, fail to comply with the prescribed 
requirements to such an extent that a meaningful search could not be carried out,  
the said Authority shall so declare and shall notify th e applicant and the International Bureau that no 
international search report will be established.  
 
     (b) If any of the situations re ferred to in subparagraph ( a) is found to exist in connection with 
certain claims only, the international search report sha ll so indicate in respect of such claims, whereas, 
for the other claims, the said report shall be established as provided in Article 18.  
 
(3) (a) If the International Searching Authority consid ers that the international application does not 
comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international 
search report on those parts of the international a pplication which relate to the invention first 
mentioned in the claims (“main invention”) and, provided the required additional fees have been paid 
within the prescribed time limit, on those parts of  the international application which relate to 
inventions in respect of which the said fees were paid.  
      (b) The national law of any designated State may pr ovide that, where the national Office of that 
State finds the invitation, referred to in subparagraph ( a), of the International Searching Authority 
justified and where the applicant has not paid all additional fees, those parts of the international 
application which consequently have not been search ed shall, as far as effects in that State are 
concerned, be considered withdrawn unless a special fe e is paid by the applicant to the national Office 
of that State.  
  IP/N/1/AUS/P/6 
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  Article 18 
The International Search Report 
 
(1) The international search report shall be establis hed within the prescribed time limit and in the 
prescribed form.  
 
(2) The international search report shall, as soon as it has been established, be transmitted by the 
International Searching Authority to the applicant and the International Bureau.  
 (3) The international search report or the d eclaration referred to in Article 17 (2) ( a) shall be 
translated as provided in the Regulations. The tr anslations shall be prepared by or under the 
responsibility of the International Bureau.  
 
Article 19 
Amendment of the Claims Before the International Bureau 
 
(1) The applicant shall, after having received th e international search report, be entitled to one 
opportunity to amend the claims of the internati onal application by filing amendments with the 
International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, 
as provided in the Regulations, explaining the ame ndments and indicating any impact that such 
amendments might have on the description and the drawings.  
 
(2) The amendments shall not go beyond the disclosure in the international application as filed.   (3) If the national law of any designated St ate permits amendments to go beyond the said 
disclosure, failure to comply with paragraph (2 ) shall have no consequence in that State.  
 
Article 20 
Communication to Designated Offices 
 
(1) (a) The international application, together with the international search report (including any 
indication referred to in Article 17 (2) ( b)) or the declaration referred to in Article 17 (2) ( a), shall be 
communicated to each designated Office, as provided in the Regulations, unless the designated Office 
waives such requirements in its entirety or in part.        (b) The communication shall include the transla tion (as prescribed) of the said report or 
declaration.  
 
(2) If the claims have been amended by virtue of Article 19 (1), the communication shall either 
contain the full text of the claims both as filed and as amended or shall contain the full text of the 
claims as filed and specify the amendments, and sha ll include the statement, if any, referred to in 
Article 19 (1).   
(3) At the request of the designated Office or th e applicant, the International Searching Authority 
shall send to the said Office or the applicant, r espectively, copies of the documents cited in the 
international search report, as provided in the Regulations.  
 
Article 21 
International Publication 
 
(1) The International Bureau shall publish international applications.  
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  (2) (a) Subject to the exceptions provided for in subparagraph ( b) and in Article 64 (3), the 
international publication of the international applica tion shall be effected promptly after the expiration 
of 18 months from the priority date of that application.        (b) The applicant may ask the Inte rnational Bureau to publish his international application any 
time before the expiration of the tim e limit referred to in subparagraph ( a). The International Bureau 
shall proceed accordingly, as provided in the Regulations.   (3) The international search report or the d eclaration referred to in Article 17 (2) ( a) shall be 
published as prescribed in the Regulations.  
 
(4) The language and form of the international publication and other details are governed by the 
Regulations.   (5) There shall be no international publication if th e international application is withdrawn or is 
considered withdrawn before the technical prepar ations for publication have been completed.  
 (6) If the international application contains expr essions or drawings which, in the opinion of the 
International Bureau, are contrary to morality or pub lic order, or if, in its opinion, the international 
application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its pub lications, indicating the place and number of 
words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.  
 
Article 22 
Copy, Translation, and Fee, to Designated Offices 
 (1) The applicant shall furnish a copy of the international application (unless the communication 
provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay 
the national fee (if any), to each designated Office not  later than at the expi ration of 20 months from 
the priority date. Where the national law of the desi gnated State requires the indication of the name of 
and other prescribed data concerning the inventor but  allows that these indications be furnished at a 
time later than that of the filing of a national ap plication, the applicant shall, unless they were 
contained in the request, furnish the said indications to the national Office of or acting for that State 
not later than at the expiration of 20 months from the priority date.   (2) Where the International Searching Authorit y makes a declaration, under Article 17 (2) ( a), 
that no international search report will be establishe d, the time limit for performing the acts referred to 
in paragraph (1) of this Article shall be the same as that provided for in paragraph (1).  
 (3) Any national law may, for performing the acts re ferred to in paragraphs (1) or (2), fix time 
limits which expire later than the time limit provided for in those paragraphs. 
 
Article 23 
Delaying of National Procedure 
 
(1) No designated Office shall process or examin e the international application prior to the 
expiration of the applicable time limit under Article 22.   
(2) Notwithstanding the provisions of paragraph (1), any designated Office may, on the express 
request of the applicant, process or examine the international application at any time.  
  IP/N/1/AUS/P/6 
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  Article 24 
Possible Loss of Effect in Designated States 
 
(1) Subject, in case (ii) below, to the provisions of Article 25, the effect of the international 
application provided for in Article 11 (3) sha ll cease in any designated State with the same 
consequences as the withdrawal of any national application in that State:  
  (i) if the applicant withdraws his interna tional application or the designation of that 
State;  
 
 (ii) if the international application is consid ered withdrawn by virtue of Articles 12 (3), 
14 (1) ( b), 14 (3) ( a), or 14 (4), or if the designation of that State is considered 
withdrawn by virtue of Article 14 (3) ( b);  
  (iii) if the applicant fails to perform the acts referred to in Article 22 within the applicable 
time limit.  
 (2) Notwithstanding the provisions of paragraph (1), any designated Office may maintain the 
effect provided for in Article 11 (3) even where such effect is not required to be maintained by virtue 
of Article 25 (2).  
 
Article 25 
Review By Designated Offices 
 
(1) (a) Where the receiving Office has re fused to accord an internationa l filing date or has declared 
that the international application is considered wit hdrawn, or where the International Bureau has made 
a finding under Article 12 (3), the International Bur eau shall promptly send, at the request of the 
applicant, copies of any document in the file to an y of the designated Offices named by the applicant.  
      (b) Where the receiving Office has declared that th e designation of any given State is considered 
withdrawn, the International Bureau shall promptly se nd, at the request of the applicant, copies of any 
document in the file to the national Office of such State.  
 
     (c) The request under subparagraphs ( a) or ( b) shall be presented within the prescribed time limit.  
 (2) (a) Subject to the provisions of subparagraph ( b), each designated Office shall, provided that the 
national fee (if any) has been paid and the appropr iate translation (as prescribed) has been furnished 
within the prescribed time limit, decide whether th e refusal, declaration, or finding, referred to in 
paragraph (1) was justified under the provisions of this  Treaty and the Regulations, and, if it finds that 
the refusal or declaration was the result of an error or omission on the part of the receiving Office or that the finding was the result of an error or omission  on the part of the International Bureau, it shall, 
as far as effects in the State of the designated Office are concerned, treat the international application 
as if such error or omission had not occurred.  
 
     (b) Where the record copy has reach ed the International Bureau after the expiration of the time 
limit prescribed under Article 12 (3) on account of any error or omission on the part of the applicant, the provisions of subparagraph ( a) shall apply only under the circumstances referred to in 
Article 48 (2).   IP/N/1/AUS/P/6 
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  Article 26 
Opportunity to Correct Before Designated Offices 
 
No designated Office shall reject  an international application on the grounds of non-compliance with 
the requirements of this Treaty and the Regulations without first giving the applicant the opportunity 
to correct the said application to the extent and according to the procedure provided by the national 
law for the same or comparable situations  in respect of national applications.  
 
Article 27 
National Requirements 
 
(1) No national law shall require compliance with re quirements relating to the form or contents of 
the international application different from or add itional to those which are provided for in this Treaty 
and the Regulations.   
(2) The provisions of paragraph (1) neither affect the application of the provisions of Article 7 (2) 
nor preclude any national law from requiring, once th e processing of the international application has 
started in the designated Office, the furnishing:    (i) when the applicant is a legal entity, of  the name of an officer entitled to represent 
such legal entity,  
 
 (ii) of documents not part of the interna tional application but which constitute proof of 
allegations or statements made in that a pplication, including the confirmation of the 
international application by the signature of  the applicant when that application, as 
filed, was signed by his representative or agent.  
 
(3) Where the applicant, for the purposes of any d esignated State, is not qualified according to the 
national law of that State to file a national applica tion because he is not the inventor, the international 
application may be rejected by the designated Office.   (4) Where the national law provides, in respect of the form or contents of  national applications, 
for requirements which, from the viewpoint of app licants, are more favourable than the requirements 
provided for by this Treaty and the Regulations in respect of international applications, the national 
Office, the courts and any other competent organs of or acting for the designated State may apply the 
former requirements, instead of th e latter requirements, to international applications, except where the 
applicant insists that the requirements provided for by this Treaty and the Regulations be applied to 
his international application.  
 (5) Nothing in this Treaty and the Regulations is  intended to be construed as prescribing anything 
that would limit the freedom of each Contracting State to prescribe such substantive conditions of 
patentability as it desires. In particular, any provisio n in this Treaty and the Regulations concerning 
the definition of prior art is exclusively for the purposes of the international procedure and, 
consequently, any Contracting State is free to a pply, when determining the patentability of an 
invention claimed in an international application, th e criteria of its national law in respect of prior art 
and other conditions of patentability not constituting  requirements as to the form and contents of 
applications.   
(6) The national law may require that the applican t furnish evidence in resp ect of any substantive 
condition of patentability prescribed by such law.   (7) Any receiving Office or, once the processing of th e international application has started in the 
designated Office, that Office may apply the nationa l law as far as it relates to any requirement that  IP/N/1/AUS/P/6 
 Page 151 
 
 
  the applicant be represented by an agent having the ri ght to represent applicants before the said Office 
and/or that the applicant have an address in the designated State for the purpose of receiving 
notifications.   (8) Nothing in this Treaty and the Regulations is  intended to be construed as limiting the freedom 
of any Contracting State to apply measures deem ed necessary for the preservation of its national 
security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to f ile international applications.  
 
Article 28 
Amendment of the Claims, the Description,  and the Drawings, Before Designated Offices 
 
(1) The applicant shall be given the opportunity  to amend the claims, the description, and the 
drawings, before each designated Office within th e prescribed time limit. No designated Office shall 
grant a patent, or refuse the grant of a patent, before such time limit has expired except with the 
express consent of the applicant.  
 (2) The amendments shall not go beyond the disclos ure in the international application as filed 
unless the national law of the designated State permits them to go beyond the said disclosure.   (3) The amendments shall be in accordance with the national law of the designated State in all 
respects not provided for in this Treaty and the Regulations.  
 (4) Where the designated Office requires a transl ation of the international application, the 
amendments shall be in the language of the translation.   
Article 29 
Effects of the International Publication 
 
(1) As far as the protection of any rights of the applicant in a designated State is concerned, the 
effects, in that State, of the international publicatio n of an international application shall, subject to 
the provisions of paragraphs (2) to (4), be the sa me as those which the national law of the designated 
State provides for the compulsory national publicatio n of unexamined national applications as such.  
 (2) If the language in which the international pub lication has been effected is different from the 
language in which publications under the national law are effected in  the designated State, the said 
national law may provide that the effects provided fo r in paragraph (1) shall be applicable only from 
such time as:  
  (i) a translation into the latter language has been published as provided by the national 
law, or  
  (ii) a translation into the latter language has been made available to the public, by laying 
open for public inspection as provided by the national law, or  
  (iii) a translation into the latter language has been transmitted by the applicant to the 
actual or prospective unauthorized user of the invention claimed in the international application, or  
 
 (iv) both the acts described in (i) and (iii), or  both the acts described in (ii) and (iii), have 
taken place.  
 IP/N/1/AUS/P/6 
Page 152  
 
  (3) The national law of any designated State may provide that, where the international 
publication has been effected, on the request of the applicant, before the expiration of 18 months from 
the priority date, the effects provided for in paragr aph (1) shall be applicable only from the expiration 
of 18 months from the priority date.   
(4) The national law of any designated State may provide that the effects provided for in 
paragraph (1) shall be applicable only from the date  on which a copy of the international application 
as published under Article 21 has been received in the national Office of or acting for such State. The 
said Office shall publish the date of receipt in its gazette as soon as possible.  
 
Article 30 
Confidential Nature of the International Application 
 (1) (a) Subject to the provisions of subparagraph (b ), the International Bur eau and the International 
Searching Authorities shall not allow access by any pe rson or authority to the international application 
before the international publication of that appl ication, unless requested or authorized by the 
applicant.        (b) The provisions of subparagraph (a) sh all not apply to any transmittal to the competent 
International Searching Authority, to transm ittals provided for under Article 13, and to 
communications provided for under Article 20.  
 
(2) (a) No national Office shall allow access to the in ternational application by third parties, unless 
requested or authorized by the applicant, before the earliest of the following dates:  
  (i) date of the international publica tion of the international application,  
 
 (ii) date of the receipt of the communication of the international application under 
Article 20,  
  (iii) date of the receipt of a copy of th e international application under Article 22.  
 
     (b) The provisions of subparagraph (a) shal l not prevent any national Office from informing third 
parties that it has been designate d, or from publishing that fact. Such information or publication may, 
however, contain only the following data: identification of the receiving Office, name of the applicant, 
international filing date, inte rnational application number, and title of the invention.  
 
     (c) The provisions of subparagraph (a) sh all not prevent any designated Office from allowing 
access to the international application for the purposes of the judicial authorities.  
 (3) The provisions of paragraph (2) (a) shall apply to any receiving Office except as far as 
transmittals provided for under Ar ticle 12 (1) are concerned.  
 
(4) For the purposes of this Article, the term “ac cess” covers any means by which third parties 
may acquire cognizance, including individual comm unication and general pub lication, provided, 
however, that no national Office shall generally publis h an international application or its translation 
before the international publication or, if inte rnational publication h as not taken place by the 
expiration of 20 months from the priority date, before the expiration of 20 months from the said 
priority date.   IP/N/1/AUS/P/6 
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  CHAPTER II 
 
International Preliminary Examination 
 
Article 31 
Demand for International Preliminary Examination 
 
(1) On the demand of the applicant, his interna tional application shall be the subject of an 
international preliminary examination as provided in the following provisions and the Regulations.  
 
(2) (a) Any applicant who is a resident or nationa l, as defined in the Regulations, of a Contracting 
State bound by Chapter II, and whose international application has been filed with the receiving 
Office of or acting for such State, may make a de mand for international preliminary examination.  
      (b) The Assembly may decide to allow persons  entitled to file international applications to make 
a demand for international preliminary examination even  if they are residents or nationals of a State 
not party to this Treaty or not bound by Chapter II.   (3) The demand for international preliminary examination shall be made separately from the 
international application. The demand shall contai n the prescribed particulars and shall be in the 
prescribed language and form.  
 
(4) (a) The demand shall indicate the Contracting St ate or States in which the applicant intends to 
use the results of the international preliminary ex amination (“elected States”). Additional Contracting 
States may be elected later. Election may relate only to Contracting States already designated under 
Article 4.  
 
     (b) Applicants referred to in paragra ph (2) (a) may elect any Contracting State bound by 
Chapter II. Applicants referred to in paragraph (2 ) (b) may elect only such Contracting States bound 
by Chapter II as have declared that they are prepared to be elected by such applicants.  
 (5) The demand shall be subject to the payment of  the prescribed fees with in the prescribed time 
limit.  
 (6) (a) The demand shall be submitted to the co mpetent International Preliminary Examining 
Authority referred to in Article 32.   
     (b) Any later election shall be submitted to the International Bureau.  
 (7) Each elected Office shall be notified of its election.   
Article 32 
The International Preliminary Examining Authority 
 
(1) International preliminary examination shall be  carried out by the International Preliminary 
Examining Authority.   (2) In the case of demands referred to in Article 31 (2) (a), the receiving Office, and, in the case 
of demands referred to in Article 31 (2) (b), the Assembly, shall, in accord ance with the applicable 
agreement between the interested International Pr eliminary Examining Authority or Authorities and 
the International Bureau, specify the Internationa l Preliminary Examining Authority or Authorities 
competent for the preliminary examination.   IP/N/1/AUS/P/6 
Page 154  
 
  (3) The provisions of Article 16 (3) shall apply, mutatis mutandis, in respect of International 
Preliminary Examining Authorities.   
Article 33 
The International Preliminary Examination 
 
(1) The objective of the international preliminary examination is to formulate a preliminary and 
non-binding opinion on the questions whether the clai med invention appears to be novel, to involve 
an inventive step (to be non-obvious), and to be industrially applicable.   
(2) For the purposes of the international prelimin ary examination, a claimed invention shall be 
considered novel if it is not anticipated by the prior art as defined in the Regulations.  
 (3) For the purposes of the international prelimin ary examination, a claimed invention shall be 
considered to involve an inventive step if, having re gard to the prior art as defined in the Regulations, 
it is not, at the prescribed relevant date, obvious to a person skilled in the art.  
 (4) For the purposes of the international prelimin ary examination, a claimed invention shall be 
considered industrially applicable if, according to its nature, it can be made or used (in the 
technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.  
 
(5) The criteria described above merely serve  the purposes of international preliminary 
examination. Any Contracting State may apply a dditional or different criteria for the purpose of 
deciding whether, in that State, the claimed invention is patentable or not.   
(6) The international preliminary examination sh all take into consideration all the documents 
cited in the international search report. It may take into consideration any additional documents 
considered to be relevant in the particular case.   
Article 34 
Procedure Before the International Preliminary Examining Authority 
 
(1) Procedure before the International Preliminar y Examining Authority shall be governed by the 
provisions of this Treaty, the Regulations, and th e agreement which the International Bureau shall 
conclude, subject to this Treaty and the Regulations, with the said Authority.   
(2) (a) The applicant shall have a right to communica te orally and in writing with the International 
Preliminary Examining Authority.        (b) The applicant shall have a right to amen d the claims, the description, and the drawings, in the 
prescribed manner and within the prescribed time limit, before the international preliminary 
examination report is established. The amendm ent shall not go beyond the disclosure in the 
international application as filed.  
      (c) The applicant shall receive at least one written opinion from the International Preliminary 
Examining Authority unless such Authority considers that all of the following conditions are fulfilled:  
 
 (i) the invention satisfies the criteria set forth in Article 33 (1),  
  (ii) the international application complies with the requirements of this Treaty and the 
Regulations in so far as checked by that Authority,  
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   (iii) no observations are intended to be ma de under Article 35 (2), last sentence.  
      (d) The applicant may respond to the written opinion.   (3) (a) If the International Preliminary Examini ng Authority considers that the international 
application does not comply with the requirement of unity of invention as set forth in the Regulations, 
it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or 
to pay additional fees.        (b) The national law of any elected State may provide that, where the applicant chooses to restrict 
the claims under subparagraph (a), those parts of the international application which, as a 
consequence of the restriction, are not to be the s ubject of international preliminary examination shall, 
as far as effects in that State are concerned, be co nsidered withdrawn unless a special fee is paid by 
the applicant to the national Office of that State.   
     (c) If the applicant does not comply with the invitation referred to in s ubparagraph (a) within the 
prescribed time limit, the International Prelim inary Examining Authority shall establish an 
international preliminary examination report on tho se parts of the international application which 
relate to what appears to be the main invention a nd shall indicate the relevant facts in the said report. 
The national law of any elected State may provide that, where its national Office finds the invitation 
of the International Preliminary Examining Author ity justified, those parts of the international 
application which do not relate to the main inve ntion shall, as far as effects in that State are 
concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office.  
 (4) (a) If the International Preliminary Examining Authority considers   
 (i) that the international application relate s to a subject matter on which the International 
Preliminary Examining Authority is not re quired, under the Regulations, to carry out 
an international preliminary examination, and in the particular case decides not to carry out such examination, or  
  (ii) that the description, the claims, or the drawings, are so unclear, or the claims are so 
inadequately supported by the description, that no meaningful opinion can be formed 
on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention,  
the said Authority shall not go into the questions re ferred to in Article 33 (1) and shall inform the 
applicant of this opinion and the reasons therefor.  
 
     (b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection 
with, certain claims only, the provisions of that subparagraph shall apply on ly to the said claims.  
 
Article 35 
The International Preliminary Examination Report 
 
(1) The international preliminary examination re port shall be established within the prescribed 
time limit and in the prescribed form.   (2) The international preliminary examination report shall not contain any statement on the 
question whether the claimed invention is or seems to  be patentable or unpatentable according to any 
national law. It shall state, subject to the provisi ons of paragraph (3), in relation to each claim, 
whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined for the purposes of  the international preliminary examination in 
Article 33 (1) to (4). The statement shall be accomp anied by the citation of the documents believed to IP/N/1/AUS/P/6 
Page 156  
 
  support the stated conclusion with such explana tions as the circumstances of the case may require. 
The statement shall also be accomp anied by such other observations as the Regulations provide for.  
 (3) (a) If, at the time of establishing the international preliminary examination report, the International Preliminary Examining Authority consid ers that any of the situations referred to in 
Article 34 (4) (a) exists, that report shall state this opinion and the reasons therefor. It shall not contain 
any statement as provided in paragraph (2).        (b) If a situation under Article 34 (4) (b) is found to exist, the international preliminary 
examination report shall, in relation to the claims  in question, contain the statement as provided in 
subparagraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in 
paragraph (2).   
Article 36 
Transmittal, Translation, and Communication, of th e International Preliminary Examination Report 
 
(1) The international preliminary examination repor t, together with the pr escribed annexes, shall 
be transmitted to the applicant and to the International Bureau.   (2) (a) The international preliminary examination re port and its annexes shall be translated into the 
prescribed languages.  
 
     (b) Any translation of the said report shall be prepared by or under the responsibility of the 
International Bureau, whereas any translation of the sa id annexes shall be prepared by the applicant.  
 (3) (a) The international preliminary examination repor t, together with its tr anslation (as prescribed) 
and its annexes (in the original language), shall be  communicated by the International Bureau to each 
elected Office.        (b) The prescribed translation of the annexe s shall be transmitted within the prescribed time limit 
by the applicant to the elected Offices.   
(4) The provisions of Article 20 (3) shall apply,  mutatis mutandis, to copies of any document 
which is cited in the international preliminary ex amination report and which was not cited in the 
international search report.   
Article 37 
Withdrawal of Demand or Election 
 
(1) The applicant may withdraw any or all elections.   (2) If the election of all elected States is withdrawn, the demand shall be considered withdrawn.   
(3) (a) Any withdrawal shall be notified to the International Bureau.  
      (b) The elected Offices concerned and th e International Preliminary Examining Authority 
concerned shall be notified accordingl y by the International Bureau.  
 
(4) (a) Subject to the provisions of subparagraph (b),  withdrawal of the demand or of the election of 
a Contracting State shall, unless the national law of th at State provides otherwise, be considered to be 
withdrawal of the international applica tion as far as that State is concerned.  
  IP/N/1/AUS/P/6 
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       (b) Withdrawal of the demand or of the electi on shall not be considered to be withdrawal of the 
international application if such withdrawal is eff ected prior to the expiration of the applicable time 
limit under Article 22; however, any Contracting State may provide in its national law that the 
aforesaid shall apply only if its national Office has recei ved, within the said time limit, a copy of the 
international application, together with a tran slation (as prescribed), and the national fee.  
 
Article 38 
Confidential Nature of the Inter national Preliminary Examination 
 
(1) Neither the International Bureau nor the Inte rnational Preliminary Examining Authority shall, 
unless requested or authorized by the applicant, allow access within the meaning, and with the 
proviso, of Article 30 (4) to the file of the inte rnational preliminary examination by any person or 
authority at any time, except by the elected Offi ces once the international preliminary examination 
report has been established.   
(2) Subject to the provisions of paragraph (1) a nd Articles 36 (1) and (3) and 37 (3) (b), neither 
the International Bureau nor the International Preliminary Examining Authority shall, unless 
requested or authorized by the applicant, give information on the issuance or non-issuance of an 
international preliminary examination report and on the withdrawal or non-withdrawal of the demand 
or of any election.   
Article 39 
Copy, Translation, and Fee, to Elected Offices 
 
(1) (a) If the election of any Contracting State has been effected prior to the expiration of the 19th 
month from the priority date, the provisions of Ar ticle 22 shall not apply to such State and the 
applicant shall furnish a copy of the international application (unless the communication under Article 
20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each elected Office not later than the expiration of 30 months from the priority date.        (b) Any national law may, for performing the acts referred to in subparagraph (a), fix time limits 
which expire later than the time limit provided for in that subparagraph.  
 
(2) The effect provided for in Article 11 (3) sh all cease in the elected State with the same 
consequences as the withdrawal of any national app lication in that State if the applicant fails to 
perform the acts referred to in paragraph (1) (a) within the time limit applicable under 
paragraph (1) (a) or (b).  
 
(3) Any elected Office may maintain the effect provided for in Article 11 (3) even where the 
applicant does not comply with the requirements provided for in paragraph (1) (a) or (b).  
 
Article 40 
Delaying of National Examination and Other Processing 
 
(1) If the election of any Contracting State has b een effected prior to the expiration of the 19th 
month from the priority date, the provisions of Article  23 shall not apply to such State and the national 
Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the 
examination and other processing of the internatio nal application prior to the expiration of the 
applicable time limit under Article 39.  
 (2) Notwithstanding the provisions of paragra ph (1), any elected Office may, on the express 
request of the applicant, proceed to the exam ination and other processi ng of the international 
application at any time.  IP/N/1/AUS/P/6 
Page 158  
 
   
Article 41 
Amendment of the Claims, the Description,  and the Drawings, Before Elected Offices 
 
(1) The applicant shall be given the opportunity  to amend the claims, the description, and the 
drawings, before each elected Office within the prescr ibed time limit. No elected Office shall grant a 
patent, or refuse the grant of a patent, before such  time limit has expired, except with the express 
consent of the applicant.   (2) The amendments shall not go beyond the disclosur e in the international application as filed, 
unless the national law of the elected State perm its them to go beyond the said disclosure.  
 (3) The amendments shall be in  accordance with the national law of the elected State in all 
respects not provided for in this Treaty and the Regulations.   
(4) Where an elected Office requires a transl ation of the international application, the 
amendments shall be in the language of the translation.   
Article 42 
Results of National Examination in Elected Offices 
   No elected Office receiving the international pr eliminary examination report may require that the 
applicant furnish copies, or information on th e contents, of any papers connected with the 
examination relating to the same internationa l application in any other elected Office.  
 
CHAPTER III 
 
Common Provisions 
 
Article 43 
Seeking Certain Kinds of Protection 
 
In respect of any designated or elected State whose law provides for the grant of inventors’ 
certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, or utility certificat es of addition, the applicant may indicate, as prescribed in the 
Regulations, that his international a pplication is for the grant, as far as that State is concerned, of an 
inventor’s certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the 
grant of a patent or certificate of addition, an inve ntor’s certificate of addition, or a utility certificate 
of addition, and the ensuing effect shall be govern ed by the applicant’s choice. For the purposes of 
this Article and any Rule thereunder,  Article 2 (ii) shall not apply.  
 
Article 44 
Seeking Two Kinds of Protection 
 
In respect of any designated or elected State who se law permits an application, while being for the 
grant of a patent or one of the other kinds of prot ection referred to in Article 43, to be also for the 
grant of another of the said kinds of protection,  the applicant may indicate, as prescribed in the 
Regulations, the two kinds of protec tion he is seeking, and the ensui ng effect shall be governed by the 
applicant’s indications. For the purposes of this  Article, Article 2 (ii) shall not apply.  
  IP/N/1/AUS/P/6 
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  Article 45 
Regional Patent Treaties 
 
(1) Any treaty providing for the grant of regional patents (“regional patent treaty”), and giving to 
all persons who, according to Article 9, are entitled to file international applications the right to file 
applications for such patents, may provide that international applications designating or electing a 
State party to both the regional pa tent treaty and the present Treaty may be filed as applications for 
such patents.   (2) The national law of the said designated or el ected State may provide that any designation or 
election of such State in the international application shall have the effect of an indication of the wish 
to obtain a regional patent under the regional patent treaty.   
Article 46 
Incorrect Translation of the International Application 
 
If, because of an incorrect translation of the intern ational application, the scope of any patent granted 
on that application exceeds the scope of the intern ational application in its  original language, the 
competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to th e extent that its scope has exceeded the scope of 
the international application in its original language.  
 
Article 47 
Time Limits 
 
(1) The details for computing time limits referre d to in this Treaty are governed by the 
Regulations.  
 (2) (a) All time limits fixed in Chapters I and II of this Treaty may, outside any revision under 
Article 60, be modified by a decision of the Contracting States.        (b) Such decisions shall be made in the A ssembly or through voting by correspondence and must 
be unanimous.  
      (c) The details of the procedure are governed by the Regulations.   
Article 48 
Delay in Meeting Certain Time Limits 
 
(1) Where any time limit fixed in this Treaty or the Regulations is not me t because of interruption 
in the mail service or unavoidable loss or delay in the mail, the time limit shall be deemed to be met in 
the cases and subject to the proof and other conditions prescribed in the Regulations.  
 
(2) (a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted 
under its national law, any delay in meeting any time limit.        (b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than 
those referred to in subparagraph (a), any delay in meeting any time limit.  
 IP/N/1/AUS/P/6 
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  Article 49 
Right to Practice Before International Authorities 
 
Any attorney, patent agent, or other person, having the right to practice before the national Office with 
which the international application was filed, sha ll be entitled to practice before the International 
Bureau and the competent Interna tional Searching Authority and competent International Preliminary 
Examining Authority in respect of that application.   
CHAPTER IV 
 
Technical Services 
 
Article 50 
Patent Information Services 
 (1) The International Bureau may furnish services by providing technical and any other pertinent 
information available to it on the basis of publis hed documents, primarily patents and published 
applications (referred to in this Article as “the information services”).   (2) The International Bureau may provide these in formation services either directly or through 
one or more International Searching Authorities or other national or international specialized 
institutions, with which the Internati onal Bureau may reach agreement.  
 (3) The information services shall be operated in a way particularly facilitating the acquisition by 
Contracting States which are developing countries of technical knowledge and technology, including 
available published know-how.  
 
(4) The information services shall be available to  Governments of Contracting States and their 
nationals and residents. The Assembly may decide to make these services available also to others.  
 (5) (a) Any service to Governments of Contracting States shall be furnished at cost, provided that, when the Government is that of a Contracting Stat e which is a developing country, the service shall be 
furnished below cost if the difference can be cove red from profit made on services furnished to others 
than Governments of Contracting States or from the sources referred to in Article 51 (4).        (b) The cost referred to in subparagraph (a) is to be understood as cost over and above costs 
normally incident to the performance of the service s of a national Office or the obligations of an 
International Searching Authority.  
 (6) The details concerning the implementation of th e provisions of this Article shall be governed 
by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups 
as the Assembly may set up for that purpose.   
(7) The Assembly shall, when it considers it necessary, recommend methods of providing 
financing supplementary to those referred to in paragraph (5).   
Article 51 
Technical Assistance 
 
(1) The Assembly shall establish a Committee for Tec hnical Assistance (referred to in this Article 
as “the Committee”).    IP/N/1/AUS/P/6 
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  (2) (a) The members of the Comm ittee shall be elected among the Contracting States, with due 
regard to the representation of developing countries.  
      (b) The Director General shall, on his own initiative or at the request of the Committee, invite 
representatives of intergovernmental organizations con cerned with technical assistance to developing 
countries to participate in th e work of the Committee.  
 (3) (a) The task of the Committee shall be to  organize and supervise technical assistance for 
Contracting States which are developing countries in developing their patent systems individually or 
on a regional basis.  
 
     (b) The technical assistance shall comprise, among other things, the training of specialists, the loaning of experts, and the supply of equipment bot h for demonstration and for operational purposes.  
 (4) The International Bureau sh all seek to enter into agreem ents, on the one hand, with 
international financing organizati ons and intergovernmental organi zations, particularly the United 
Nations, the agencies of the United Nations, and th e Specialized Agencies c onnected with the United 
Nations concerned with technical assistance, and, on the other hand, with the Governments of the 
States receiving the technical assistance, for the fi nancing of projects pursuant to this Article.  
 (5) The details concerning the implementation of th e provisions of this Article shall be governed 
by decisions of the Assembly and, within the limits to be fixed by the Assembly, such working groups 
as the Assembly may set up for that purpose.   
Article 52 
Relations with Other Provisions of the Treaty 
 
Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this 
Treaty. Such provisions are not applicable to th e present Chapter or to its implementation.  
 
CHAPTER V 
 
Administrative Provisions 
 
Article 53 
Assembly 
 (1) (a) The Assembly shall, subject to Article  57 (8), consist of the Contracting States.  
      (b) The Government of each Contracting St ate shall be represented by one delegate, who may be 
assisted by alternate delegates, advisors, and experts.   (2) (a) The Assembly shall:  
 
 (i) deal with all matters concerning the ma intenance and development of the Union and 
the implementation of this Treaty;  
  (ii) perform such tasks as are specifically assigned to it under other provisions of this 
Treaty;  
  (iii) give directions to the International Bureau concerning the preparation for revision 
conferences;  IP/N/1/AUS/P/6 
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    (iv) review and approve the reports and ac tivities of the Director General concerning the 
Union, and give him all necessary instructions concerning matters within the competence of the Union;  
    (v) review and approve the reports and activities of the Executive Committee established 
under paragraph (9), and give inst ructions to such Committee;  
  (vi) determine the program and adopt the tr iennial budget of the Union, and approve its 
final accounts;  
 
 (vii) adopt the financial regulations of the Union;  
  (viii) establish such committees  and working groups as it deems appropriate to achieve the 
objectives of the Union;  
 
 (ix) determine which States other than Contr acting States and, subject to the provisions of 
paragraph (8), which intergovernmental  and international non-governmental 
organizations shall be admitted to its meetings as observers;  
  (x) take any other appropriate action designe d to further the objectives of the Union and 
perform such other functions as ar e appropriate under this Treaty.  
 
     (b) With respect to matters which are of in terest also to other Unions administered by the 
Organization, the Assembly shall make its decisions  after having heard the advice of the Coordination 
Committee of the Organization.   
(3) A delegate may represent, and vote in the name of, one State only.  
 (4) Each Contracting State shall have one vote.   (5) (a) One-half of the Contracting States shall constitute a quorum.   
     (b) In the absence of the quorum, the Asse mbly may make decisions but, with the exception of 
decisions concerning its own procedure, all such deci sions shall take effect only if the quorum and the 
required majority are attained through voting by  correspondence as provided in the Regulations.  
 (6) (a) Subject to the provisions of Articles 47 (2) (b ), 58 (2) (b), 58 (3) and 61 (2) (b), the decisions 
of the Assembly shall require two-thirds of the votes cast.  
      (b) Abstentions shall not be considered as votes.   (7) In connection with matters of exclusive inte rest to States bound by Chapter II, any reference 
to Contracting States in paragraphs (4), (5), and (6 ), shall be considered as applying only to States 
bound by Chapter II.  
 (8) Any intergovernmental organization appointed  as International Searching or Preliminary 
Examining Authority shall be admitted as observer to the Assembly.   
(9) When the number of Contracting States ex ceeds forty, the Assembly shall establish an 
Executive Committee. Any reference to the Executive Committee in th is Treaty and the Regulations 
shall be construed as references to such  Committee once it has been established.   IP/N/1/AUS/P/6 
 Page 163 
 
 
  (10) Until the Executive Committee has been establis hed, the Assembly shall approve, within the 
limits of the program and triennial budget, the annua l programs and budgets prepared by the Director 
General.   (11) (a) The Assembly shall meet in every second  calendar year in ordinary session upon convocation 
by the Director General and, in the absence of exceptional circumstances, during the same period and 
at the same place as the General Assembly of the Organization.        (b) The Assembly shall meet in extraordin ary session upon convocation by the Director General, 
at the request of the Executive Committee, or at th e request of one-fourth of the Contracting States.  
 
(12) The Assembly shall adopt its own rules of procedure.   
Article 54 
Executive Committee 
 
(1) When the Assembly has estab lished an Executive Committee, th at Committee shall be subject 
to the provisions set forth hereinafter.   (2) (a) The Executive Committee shall, subject to Artic le 57 (8), consist of States elected by the 
Assembly from among States members of the Assembly.  
 
     (b) The Government of each State member  of the Executive Committee shall be represented by 
one delegate, who may be assisted by alte rnate delegates, advisors, and experts.  
 (3) The number of States members of the Executive Committee shall correspond to one-fourth of 
the number of States members of the Assembly. In  establishing the number of seats to be filled, 
remainders after division by four shall be disregarded.   (4) In electing the members of the Executive Comm ittee, the Assembly shall have due regard to 
an equitable geographical distribution.   
(5) (a) Each member of the Executive Committee shall serve from the close of the session of the 
Assembly which elected it to the close of the next ordinary session of the Assembly.  
      (b) Members of the Executive Committee may be  re-elected but only up to a maximum of two-
thirds of such members.  
 
     (c) The Assembly shall establish the detail s of the rules governing the election and possible re-
election of the members of the Executive Committee.   (6) (a) The Executive Committee shall:   
 (i) prepare the draft agenda of the Assembly;  
  (ii) submit proposals to the Assembly in respect of the draft program and biennial budget 
of the Union prepared by the Director General;  
 
 (iv) submit, with appropriate comments, to the Assembly the periodical reports of the 
Director General and the yearly audit reports on the accounts;  
 IP/N/1/AUS/P/6 
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   (v) take all necessary measures to ensure th e execution of the program of the Union by 
the Director General, in accordance with the decisions of the Assembly and having 
regard to circumstances arising between two ordinary sessions of the Assembly;  
  (vi) perform such other functions as ar e allocated to it under this Treaty.  
 
     (b) With respect to matters which are of in terest also to other Unions administered by the 
Organization, the Executive Committee shall make it s decisions after having heard the advice of the 
Coordination Committee of the Organization.   
(7) (a) The Executive Committee sha ll meet once a year in ordinary session upon convocation by the 
Director General, preferably during the same period and at the same place as the Coordination Committee of the Organization.        (b) The Executive Committee shall meet in extraordinary session upon convocation by the 
Director General, either on his own initiative or at the request of its Chairman or one-fourth of its 
members.   (8) (a) Each State member of the Ex ecutive Committee shall have one vote.  
      (b) One-half of the members of th e Executive Committee shall constitute a quorum.  
 
     (c) Decisions shall be made by a simple majority of the votes cast.        (d) Abstentions shall not be considered as votes.   
     (e) A delegate may represent, a nd vote in the name of, one State only.  
 (9) Contracting States not members of the Executiv e Committee shall be admitted to its meetings 
as observers, as well as any intergovernmental organi zation appointed as International Searching or 
Preliminary Examining Authority.   
(10) The Executive Committee shall adopt its own rules of procedure.  
 
Article 55 
International Bureau 
 (1) Administrative tasks concerning the Union sha ll be performed by the International Bureau.  
 (2) The International Bureau shall provide the secr etariat of the various organs of the Union.  
 (3) The Director General shall be the chief execu tive of the Union and shall represent the Union.  
 
(4) The International Bureau shall publish a Gaze tte and other publications provided for by the 
Regulations or required by the Assembly.   (5) The Regulations shall specify the services that national Offices shall perform in order to assist 
the International Bureau and the International S earching and Preliminary Examining Authorities in 
carrying out their tasks under this Treaty.  
 (6) The Director General and any staff member d esignated by him shall participate, without the 
right to vote, in all meetings of the Assembly , the Executive Committee and any other committee or  IP/N/1/AUS/P/6 
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  working group established under this Treaty or the Regulations. The Director General, or a staff 
member designated by him, shall be ex officio secretary of these bodies.   (7) (a) The International Bureau shall, in accordance with the dir ections of the Assembly and in 
cooperation with the Executive Committee, make th e preparations for the revision conferences.  
 
     (b) The International Bureau may consu lt with intergovernmental and international non-
governmental organizations concerning pr eparations for revision conferences.  
      (c) The Director General and persons designate d by him shall take part, without the right to vote, 
in the discussions at revision conferences.  
 (8) The International Bureau shall carry  out any other tasks assigned to it.  
 
Article 56 
Committee for Technical Cooperation 
 
(1) The Assembly shall establish a Committee for Technical Cooperation (referred to in this 
Article as “the Committee”).   (2) (a) The Assembly shall determine the compos ition of the Committee and appoint its members, 
with due regard to an equitable re presentation of developing countries.  
      (b) The International Searching and Pre liminary Examining Authorities shall be ex officio 
members of the Committee. In the case where su ch an Authority is the national Office of a 
Contracting State, that State shall not be  additionally represented on the Committee.  
 
     (c) If the number of Contracting States so allows, the total number of members of the Committee shall be more than double the number of ex officio members.        (d) The Director General shall, on his own initiative or at the request of the Committee, invite 
representatives of interested organizations to par ticipate in discussions of interest to them.  
 
(3) The aim of the Committee shall be to contribute, by advice and recommendations:    (i) to the constant improvement of the services provided for under this Treaty,   
 (ii) to the securing, so long as there are several International Searching Authorities and 
several International Preliminary Examinin g Authorities, of the maximum degree of 
uniformity in their documentation and work ing methods and the maximum degree of 
uniformly high quality in their reports, and  
  (iii) on the initiative of the Assembly or the Executive Committee, to  the solution of the 
technical problems specifically involved in the establishment of a single International 
Searching Authority.  
 (4) Any Contracting State and any interested international organization may approach the 
Committee in writing on questions which fall w ithin the competence of the Committee.  
 
(5) The Committee may address its advice and recommendations to the Director General or, through him, to the Assembly, th e Executive Committee, all or some of the International Searching 
and Preliminary Examining Authorities, and all or some of the receiving Offices.   IP/N/1/AUS/P/6 
Page 166  
 
  (6) (a) In any case, the Director General shall tran smit to the Executive Committee the texts of all the 
advice and recommendations of the Committee. He may comment on such texts.        (b) The Executive Committee may express its views on any advice, recommendation, or other activity of the Committee, and may invite the Committee to study and report on questions falling 
within its competence. The Ex ecutive Committee may submit to the Assembly, with appropriate 
comments, the advice, recommendations and report of the Committee.   (7) Until the Executive Committee h as been established, references in paragraph (6) to the 
Executive Committee shall be construed as references to the Assembly.  
 
(8) The details of the procedure of the Committe e shall be governed by the decisions of the 
Assembly.   
Article 57 
Finances 
 
(1) (a) The Union shall have a budget.        (b) The budget of the Union shall include the income and expenses proper to the Union and its 
contribution to the budget of expe nses common to the Unions administered by the Organization.  
 
     (c) Expenses not attributable exclusively to  the Union but also to one or more other Unions 
administered by the Organization shall be consid ered as expenses common to the Unions. The share 
of the Union in such common expen ses shall be in proportion to the in terests the Union has in them.  
 
(2) The budget of the Union shall be established with due regard to the requirements of co-
ordination with the budgets of the other Unions administered by the Organization.   (3) Subject to the provisions of paragraph (5), the budget of the Union shall be financed from the 
following sources:   
 (i) fees and charges due for services rendere d by the International Bureau in relation to 
the Union;  
  (ii) sale of, or royalties on, the publications of the International Bureau concerning the 
Union;  
 
 (iii) gifts, bequests, and subventions;    (iv) rents, interests, and other miscellaneous income.   (4) The amounts of fees and charges due to the International Bureau and the prices of its 
publications shall be so fixed that they should, un der normal circumstances, be sufficient to cover all 
the expenses of the International Bureau connect ed with the administration of this Treaty.  
 (5) (a) Should any financial year close with a defi cit, the Contracting States shall, subject to the 
provisions of subparagraph (b) and (c), pay contributions to cover such deficit.  
 
     (b) The amount of the contribution of each Contracting State shall be decided by the Assembly with due regard to the number of in ternational applications which has emanated from each of them in 
the relevant year.   IP/N/1/AUS/P/6 
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       (c) If other means of pr ovisionally covering any deficit or any part thereof are secured, the 
Assembly may decide that such deficit be carried forward and that the Contracting States should not 
be asked to pay contributions.        (d) If the financial situation of the Uni on so permits, the Assembly may decide that any 
contributions paid under subparagra ph (a) be reimbursed to the Cont racting States which have paid 
them.        (e) A Contracting State which has not paid, w ithin two years of the due date as established by the 
Assembly, its contribution under subparagraph (b) ma y not exercise its right to vote in any of the 
organs of the Union. However, any organ of the Unio n may allow such a State to continue to exercise 
its right to vote in that organ so long as it is satis fied that the delay in payment is due to exceptional 
and unavoidable circumstances.   (6) If the budget is not adopted before the beginning  of a new financial period, it shall be at the 
same level as the budget of the previous year , as provided in the financial regulations.  
 (7) (a) The Union shall have a working capital fund which shall be constituted by a single payment 
made by each Contracting State. If the fund beco mes insufficient, the Assembly shall arrange to 
increase it. If part of the fund is no longer needed, it shall be reimbursed.   
     (b) The amount of the initial payment of each Contracting State to the said fund or of its 
participation in the increase thereof shall be decide d by the Assembly on the basis of principles 
similar to those provided for under paragraph (5) (b).        (c) The terms of payment shall be fixed by the Assembly on the proposal of the Director General 
and after it has heard the advice of the Coordination Committee of the Organization.  
      (d) Any reimbursement shall be proportionat e to the amounts paid by each Contracting State, 
taking into account the dates at which they were paid.   (8) (a) In the headquarters agreement concluded with the State on the territory of which the 
Organization has its headquarters, it shall be pr ovided that, whenever the working capital fund is 
insufficient, such State shall grant advances. Th e amount of these advances  and the conditions on 
which they are granted shall be the subject of separ ate agreements, in each case, between such State 
and the Organization. As long as it remains under the obligation to grant advances, such State shall 
have an ex officio seat in the Asse mbly and on the Executive Committee.  
 
     (b) The State referred to in subparagraph (a ) and the Organization shall each have the right to 
denounce the obligation to grant advances, by written notification. Denunciation shall take effect three 
years after the end of the year in which it has been notified.   (9) The auditing of the accounts shall be effected by one or more of the Contracting States or by 
external auditors, as provided in the financial re gulations. They shall be designated, with their 
agreement, by the Assembly.  
Article 58 
Regulations 
 
(1) The Regulations annexed to this Treaty provide Rules:  
  (i) concerning matters in respect of which th is Treaty expressly refers to the Regulations 
or expressly provides that they are or shall be prescribed,  IP/N/1/AUS/P/6 
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 (ii) concerning any administrative requirements, matters, or procedures,    (iii) concerning any details useful in the impl ementation of the provisions of this Treaty.  
 
(2) (a) The Assembly may amend the Regulations.  
      (b) Subject to the provisions of paragraph (3), amendments shall require three-fourths of the votes cast.   
(3) (a) The Regulations specify the Rules which may be amended  
  (i) only by unanimous consent, or    (ii) only if none of the Contracting States whose national Office acts as an International 
Searching or Preliminary Examining Authorit y dissents, and, where such Authority is 
an intergovernmental organization, if the Contracting State member of that 
organization authorized for that purpose by the other member States within the competent body of such organization does not dissent.  
      (b) Exclusion, for the future, of any such Rules from the applicable requirement shall require the 
fulfilment of the conditions referred to in subpa ragraph (a) (i) or (a) (ii), respectively.  
      (c) Inclusion, for the future, of any Rule in  one or the other of the requirements referred to in 
subparagraph (a) shall requi re unanimous consent.  
 
(4) The Regulations provide for the establishm ent, under the control of the Assembly, of 
Administrative Instructions by the Director General.   (5) In the case of conflict between the provisions of the Treaty and those of the Regulations, the 
provisions of the Treaty shall prevail.   
CHAPTER VI 
 
Disputes 
 
Article 59 
Disputes 
 
Subject to Article 64 (5), any dispute between two or more Contracting States concerning the 
interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any 
one of the States concerned, be brought before the International Court of Justice by application in 
conformity with the Statute of the Court, unless the States concerned agree on some other method of 
settlement. The Contracting State bringing the dispute before the Court shall inform the International 
Bureau; the International Bureau sha ll bring the matter to the attention of the other Contracting States.  
  IP/N/1/AUS/P/6 
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  CHAPTER VII 
 
Revision and Amendment 
 
Article 60 
Revision of the Treaty 
 
(1) This Treaty may be revised from time to time by a special conference of the Contracting 
States.   
(2) The convocation of any revision conference shall be decided by the Assembly.  
 (3) Any intergovernmental organization appointed  as International Searching or Preliminary 
Examining Authority shall be admitted as  observer to any revision conference.  
 
(4) Articles 53 (5), (9) and (11), 54, 55 (4) to (8), 56, and 57, may be amended either by a 
revision conference or according to the provisions of Article 61.   
Article 61 
Amendment of Certain Provisions of the Treaty 
 (1) (a) Proposals for the amendment of Articles 53 (5 ), (9) and (11), 54, 55 (4) to (8), 56, and 57, 
may be initiated by any State member of the A ssembly, by the Executive Committee, or by the 
Director General.        (b) Such proposals shall be communicated by  the Director General to the Contracting States at 
least six months in advance of their consideration by the Assembly.  
 (2) (a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.  
      (b) Adoption shall require three-fourths of the votes cast.   
(3) (a) Any amendment to the Articles referred to in  paragraph (1) shall enter into force one month 
after written notifications of acceptance, effected  in accordance with their respective constitutional 
processes, have been received by the Director General from three-fourths of the States members of the Assembly at the time it adopted the amendment.   
     (b) Any amendment to the said Articles thus  accepted shall bind all the States which are members 
of the Assembly at the time the amendment enters in to force, provided that  any amendment increasing 
the financial obligations of the Contracting States shall bind only those States which have notified 
their acceptance of such amendment.        (c) Any amendment accepted in accordance with the provisions of subparagraph (a) shall bind all 
States which become members of the Assembly afte r the date on which the amendment entered into 
force in accordance with the provisions of subparagraph (a).   IP/N/1/AUS/P/6 
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  CHAPTER VIII 
 
Final Provisions 
 
Article 62 
Becoming Party to the Treaty 
 
(1) Any State member of the International Uni on for the Protection of Industrial Property may 
become party to this Treaty by:   
 (i) signature followed by the deposit of an instrument of ratification, or  
  (ii) deposit of an instrument of accession.   (2) Instruments of ratification or accession shall be deposited with the Director General.  
 
(3) The provisions of Article 24 of the Stockholm Act of the Paris Convention for the Protection 
of Industrial Property shall apply to this Treaty.   (4) Paragraph (3) shall in no way be underst ood as implying the recognition or tacit acceptance 
by a Contracting State of the factual situation concerning a territory to which this Treaty is made 
applicable by another Contracting Stat e by virtue of the said paragraph.  
 
Article 63 
Entry into Force of the Treaty 
 (1) (a) Subject to the provisions of paragraph (3), th is Treaty shall enter into force three months after 
eight States have deposited their instruments of ratification or accession, provided that at least four of those States each fulfil any of the following conditions:    (i) the number of applications filed in th e State has exceeded 40,000 according to the 
most recent annual statistics published by the International Bureau,  
 
 (ii) the nationals or residents of the State have filed at least 1,000 applications in one 
foreign country according to the most recent annual statistics published by the 
International Bureau,  
 
 (iii) the national Office of the State has received at least 10,000 applications from 
nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.  
      (b) For the purposes of this paragraph, the term “applications” does not include applications for 
utility models.  
 
(2) Subject to the provisions of paragraph (3), any State which does not become party to this Treaty upon entry into force under paragraph (1) shall become bound by this Treaty three months after the date on which such State has deposite d its instrument of ratification or accession.  
 
(3) The provisions of Chapter II and the correspondi ng provisions of the Regulations annexed to 
this Treaty shall become applicable, however, only on the date on which three States each of which 
fulfil at least one of the three requirements specified in paragraph (1) have become party to this Treaty 
without declaring, as provided in Article 64 (1), that  they do not intend to be bound by the provisions  IP/N/1/AUS/P/6 
 Page 171 
 
 
  of Chapter II. That date shall not, however, be prior to that of the initial entry into force under 
paragraph (1).   
Article 64 
Reservations 
 
(1) (a) Any State may declare that it shall not be bound by the provisions of Chapter II.        (b) States making a declaration under subpar agraph (a) shall not be bound by the provisions of 
Chapter II and the corresponding provisions of the Regulations.  
 
(2) (a) Any State not having made a declarati on under paragraph (1) (a) may declare that:  
  (i) it shall not be bound by the provisions of Article 39 (1) with respect to the furnishing 
of a copy of the international application and a translation thereof (as prescribed),  
 
 (ii) the obligation to delay national processi ng, as provided for under Article 40, shall not 
prevent publication, by or through its nationa l Office, of the international application 
or a translation thereof, it being understood, however, that it is not exempted from the limitations provided for in Articles 30 and 38.  
 
     (b) States making such a declaration shall be bound accordingly.  
 (3) (a) Any State may declare that, as far as it is con cerned, international pub lication of international 
applications is not required.   
     (b) Where, at the expiration of 18 months from the priority date, the international application 
contains the designation only of such States as ha ve made declarations unde r subparagraph (a), the 
international application shall not be pu blished by virtue of Article 21 (2).  
      (c) Where the provisions of subparagraph (b) apply, the international application shall 
nevertheless be published by the International Bureau:  
 
 (i) at the request of the applicant, as provided in the Regulations,    (ii) when a national application or a pate nt based on the international application is 
published by or on behalf of the national O ffice of any designated State having made 
a declaration under subparagraph (a), promptly after such publication but not before 
the expiration of 18 months from the priority date.  
 (4) (a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not equate for prior art pu rposes the priority date claimed under the Paris 
Convention for the Protection of Industrial Property to the actual filing date in that State, may declare 
that the filing outside that State of an internationa l application designating that State is not equated to 
an actual filing in that State for prior art purposes.        (b) Any State making a declaration under subpa ragraph (a) shall to that extent not be bound by 
the provisions of Article 11 (3).  
 
     (c) Any State making a declaration under subpa ragraph (a) shall, at the same time, state in 
writing the date from which, and the conditions under which, the prior art effect of any international 
application designating that State becomes effective in  that State. This statement may be modified at 
any time by notification addressed to the Director General.  IP/N/1/AUS/P/6 
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(5) Each State may declare that it does not consider itself bound by Article 59. With regard to any dispute between any Contracting State having made  such a declaration and any other Contracting 
State, the provisions of Article 59 shall not apply.   
(6) (a) Any declaration made under this Article shall be made in writing. It may be made at the time 
of signing this Treaty, at the time of depositing the instrument of ratification or accession, or, except in the case referred to in paragraph (5), at any la ter time by notification addressed to the Director 
General. In the case of the said notification, the decl aration shall take effect six months after the day 
on which the Director General has received the no tification, and shall not affect international 
applications filed prior to the expiration of the said six-month period.  
      (b) Any declaration made under this Artic le may be withdrawn at any time by notification 
addressed to the Director General. Such withdrawal shall take effect three months after the day on 
which the Director General has received the notif ication and, in the case of the withdrawal of a 
declaration made under paragraph (3), shall not aff ect international applications filed prior to the 
expiration of the said three-month period.   (7) No reservations to this Treaty other than the reservations under paragraphs (1) to (5) are 
permitted.   
Article 65 
Gradual Application 
 
(1) If the agreement with any International S earching or Preliminary Examining Authority 
provides, transitionally, for limits on the number or  kind of international applications that such 
Authority undertakes to process, the Assembly sh all adopt the measures necessary for the gradual 
application of this Treaty and the Regulations in  respect of given categories of international 
applications. This provision shall also apply to  requests for an international-type search under 
Article 15 (5).   (2) The Assembly shall fix the dates from which, subject to the provision of paragraph (1), 
international applications may be filed and demands for internationa l preliminary examination may be 
submitted. Such dates shall not be later than six months after this Treaty has entered into force 
according to the provisions of Article 63 (1), or after Chapter II has become applicable under 
Article 63 (3), respectively.   
Article 66 
Denunciation 
 
(1) Any Contracting State may denounce this Tr eaty by notification addressed to the Director 
General.   
(2) Denunciation shall take effect six months after receipt of the said notification by the Director 
General. It shall not affect the effects of the in ternational application in the denouncing State if the 
international application was filed, and, where th e denouncing State has been elected, the election was 
made, prior to the expiration of the said six-month period.   
Article 67 
Signature and Languages 
 
(1) (a) This Treaty shall be signed in a single origin al in the English and French languages, both texts 
being equally authentic.   IP/N/1/AUS/P/6 
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     (b) Official texts shall be established by the Director General, after consultation with the 
interested Governments, in th e German, Japanese, Portuguese, Russi an and Spanish languages, and 
such other languages as the Assembly may designate.   
(2) This Treaty shall remain open for signature at Washington until December 31, 1970.  
 
Article 68 
Depositary Functions 
 (1) The original of this Treaty, when no longer open for signature, shall be deposited with the 
Director General.   (2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations annexed hereto to the Governments of  all States party to the Paris Convention for the 
Protection of Industrial Property and, on request, to the Government of any other State.  
 (3) The Director General shall register this Tr eaty with the Secretariat of the United Nations.  
 (4) The Director General shall transmit two copies,  certified by him, of any amendment to this 
Treaty and the Regulations to the Governments of  all Contracting States and, on request, to the 
Government of any other State. 
 
Article 69 
Notifications 
 The Director General shall notify the Governments of all States party to the Paris Convention for the 
Protection of Industrial Property of:    (i) signatures under Article 62,    (ii) deposits of instruments of ratif ication or accession under Article 62,  
 
 (iii) the date of entry into force of this  Treaty and the date from which Chapter II is 
applicable in accordance with Article 63 (3),  
  (iv) any declarations made under Article 64 (1) to (5),  
 
 (v) withdrawals of any declarations made under Article 64 (6) (b),    (vi) denunciations receive d under Article 66, and  
  (vii) any declarations made under Article 31 (4). IP/N/1/AUS/P/6 
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  Schedule 2A Regulations under the  Patent Cooperation Treaty 
   (subregulation 1.4 (2)) 
   
Adopted on June 19, 1970, and amended on Apr il 14, 1978, on October 3, 1978, on May 1, 1979, 
on June 16, 1980, on September 26, 1980, on July 3, 1981, on September 10, 1982, 
on October 4, 1983, on February 3, 1984, on September 28, 1984, on October 1, 1985, 
on July 12, 1991, on October 2, 1991, on Se ptember 29, 1992, on September 29, 1993, 
on October 3, 1995, on October 1, 1997, on September 15, 1998 and on September 29, 1999. 
 
TABLE OF PROVISIONS 
 
Part A: Introductory Rules 
   Rule 1 Abbreviated Expressions 
 1.1 Meaning of Abbreviated Expressions    Rule 2 Interpretation of Certain Words  2.1 “Applicant” 
 2.2 “Agent” 
 2.2 bis “Common Representative” 
 2.3 “Signature”  
Part B: Rules Concerning Chapter I of the Treaty 
   Rule 3 The Request (Form) 
 3.1 Form of Request  3.2 Availability of Forms  3.3 Check List  3.4 Particulars 
 
  Rule 4 The Request (Contents)  4.1 Mandatory and Optional Contents; Signature  4.2 The Petition  4.3 Title of the Invention 
 4.4 Names and Addresses 
 4.5 The Applicant  4.6 The Inventor  4.7 The Agent  4.8 Common Representative  4.9 Designation of States 
 4.10 Priority Claim 
 4.11 Reference to Earlier Search  4.12 Choice of Certain Kinds of Protection  4.13 Identification of Parent Application or Parent Grant  4.14 Continuation or Continuation in Part 
 4.14 bis Choice of International Searching Authority 
 4.15 Signature  4.16 Transliteration or Translation of Certain Words  4.17 Additional Matter    Rule 5 The Description 
 5.1 Manner of the Description  IP/N/1/AUS/P/6 
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   5.2  Nucleotide and/or Amino Acid Sequence Disclosure 
   Rule 6 The Claims  6.1 Number and Numbering of Claims  6.2 References to Other Parts of the International Application 
 6.3 Manner of Claiming 
 6.4 Dependent Claims  6.5 Utility Models    Rule 7 The Drawings 
 7.1 Flow Sheets and Diagrams 
 7.2 Time Limit    Rule 8 The Abstract  8.1 Contents and Form of the Abstract 
 8.2 Figure 
 8.3 Guiding Principles in Drafting    Rule 9 Expressions, Etc., Not to Be Used  9.1 Definition  9.2 Noting of Lack of Compliance 
 9.3 Reference to Article 21 (6) 
   Rule 10 Terminology and Signs  10.1 Terminology and Signs  10.2 Consistency 
 
  Rule 11 Physical Requirements of the International Application 
 11.1 Number of Copies  11.2 Fitness for Reproduction  11.3 Material to be Used  11.4 Separate Sheets, Etc. 
 11.5 Size of Sheets 
 11.6 Margins  11.7 Numbering of Sheets  11.8 Numbering of Lines  11.9 Writing of Text Matter 
 11.10 Drawings, Formulae, and Tables, in Text Matter 
 11.11 Words in Drawings  11.12 Alterations, Etc.  11.13 Special Requirements for Drawings  11.14 Later Documents  
  Rule 12 Language of the International A pplication and Translation for the Purposes of 
International Search 
 12.1 Languages Accepted for the Filing of International Applications  12.2 Language of Changes in the International Application  12.3 Translation for the Purposes of International Search 
 
  Rule 13 Unity of Invention  13.1 Requirement  13.2 Circumstances in Which th e Requirement of Unity of Invention Is to Be Considered 
Fulfilled IP/N/1/AUS/P/6 
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   13.3 Determination of Unity of Inven tion Not Affected by Manner of Claiming 
 13.4 Dependent Claims  13.5 Utility Models  
  Rule 13 bis Inventions Relating to Biological Material 
 13 bis.1 Definition 
 13 bis.2 References (General) 
 13 bis.3 References: Contents; Failure to  Include Reference or Indication 
 13 bis.4 References: Time Limit for Furnishing Indications 
 13 bis.5 References and Indications for the Purposes of One or More Designated States; 
Different Deposits for Different Designa ted States; Deposits with Depositary 
Institutions other than Those Notified 
 13 bis.6 Furnishing of Samples 
 13 bis.7 National Requirements: Notification and Publication 
 
  Rule 13 ter Nucleotide and/or Amino Acid Sequence Listings 
 13 ter.1 Sequence Listing for International Authorities 
 13 ter.2 Sequence Listing for Designated Office 
   Rule 14 The Transmittal Fee  14.1 The Transmittal Fee 
 
  Rule 15 The International Fee  15.1 Basic Fee and Designation Fee  15.2 Amounts  15.4 Time Limit for Payment; Amount Payable 
 15.5 Fees under Rule 4.9 ( c) 
 15.6 Refund    Rule 16 The Search Fee  16.1 Right to Ask for a Fee  16.2 Refund 
 16.3 Partial Refund 
 
  Rule 16 bis Extension of Time Limits for Payment of Fees 
 16 bis.1 Invitation by the Receiving Office 
 16 bis.2 Late Payment Fee 
 
  Rule 17 The Priority Document  17.1 Obligation to Submit Copy of Earlie r National or International Application 
 17.2 Availability of Copies    Rule 18 The Applicant 
 18.1 Residence and Nationality 
 18.3 Two or More Applicants  18.4 Information on Requirements Under National Law as to Applicants    Rule 19 The Competent Receiving Office 
 19.1 Where to File  IP/N/1/AUS/P/6 
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   19.2 Two or More Applicants 
 19.3 Publication of Fact of Delegation of Duties of Receiving Office  19.4 Transmittal to the International Bureau as Receiving Office    Rule 20 Receipt of the International Application 
 20.1 Date and Number 
 20.2 Receipt on Different Days  20.3 Corrected International Application  20.4 Determination under Article 11 (1)  20.5 Positive Determination 
 20.6 Invitation to Correct 
 20.7 Negative Determination  20.8 Error by the Receiving Office  20.9 Certified Copy for the Applicant  
  Rule 21 Preparation of Copies 
 21.1 Responsibility of the Receiving Office    Rule 22 Transmittal of the Record Copy and Translation  22.1 Procedure  22.3 Time Limit under Article 12 (3) 
 
  Rule 23 Transmittal of the Search Copy, Translation and Sequence Listing  23.1 Procedure    Rule 24 Receipt of the Record Copy by the International Bureau 
 24.2 Notification of Receipt of the Record Copy 
   Rule 25 Receipt of the Search Copy by the International Searching Authority  25.1 Notification of Receipt of the Search Copy    Rule 26 Checking by, and Correcting before, th e Receiving Office of Certain Elements of the 
International Application 
 26.1 Time Limit for Check  26.2 Time Limit for Correction  26.3 Checking of Physical Requirements under Article 14 (1) ( a) (v) 
 26.3 bis Invitation under Article 14 (1) ( b) to Correct Defects under Rule 11 
 26.3 ter Invitation to Correct Defects under Article 3 (4) (i) 
 26.4 Procedure  26.5 Decision of the Receiving Office  26.6 Missing Drawings  
  Rule 26 bis Correction or Addition of Priority Claim 
 26 bis.1 Correction or Addition of Priority Claim  
 26 bis.2 Invitation to Correct Defects in Priority Claims 
   Rule 27 Lack of Payment of Fees  27.1 Fees 
 
  Rule 28 Defects Noted by  the International Bureau 
 28.1 Note on Certain Defects IP/N/1/AUS/P/6 
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  Rule 29 International Applications or Designations Considered Withdrawn  
 29.1 Finding by Receiving Office  29.3 Calling Certain Facts to the Attention of the Receiving Office  29.4 Notification of Intent to Ma ke Declaration under Article 14 (4) 
 
  Rule 30 Time Limit under Article 14 (4)  30.1 Time Limit    Rule 31 Copies Required under Article 13 
 31.1 Request for Copies 
 31.2 Preparation of Copies    Rule 32 Extension of Effects of Intern ational Application to Certain Successor States 
 32.1 Request for Extension of International Application to Successor State 
 32.2 Effects of Extension to Successor State 
   Rule 33 Relevant Prior Art for the International Search  33.1 Relevant Prior Art for the International Search  33.2 Fields to be Covered by the International Search  33.3 Orientation of the International Search 
 
  Rule 34 Minimum Documentation  34.1 Definition    Rule 35 The Competent International Searching Authority 
 35.1 When Only One International Searching Authority is Competent 
 35.2 When Several International Searching Authorities are Competent  35.3 When the International Bureau is Receiving Office under Rule 19.1 ( a) (iii) 
   Rule 36 Minimum Requirements for International Searching Authorities  36.1 Definition of Minimum Requirements 
 
  Rule 37 Missing or Defective Title  37.1 Lack of Title  37.2 Establishment of Title  
  Rule 38 Missing or Defective Abstract 
 38.1 Lack of Abstract  38.2 Establishment of Abstract    Rule 39 Subject Matter under Article 17 (2) ( a) (i) 
 39.1 Definition 
 
  Rule 40 Lack of Unity of Invention (International Search) 
 40.1 Invitation to Pay  40.2 Additional Fees  40.3 Time Limit 
 
  Rule 41 Earlier Search Ot her Than International Search 
 41.1 Obligation to Use Results; Refund of Fee    Rule 42 Time Limit for International Search  IP/N/1/AUS/P/6 
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   42.1 Time Limit for International Search 
   Rule 43 The International Search Report  43.1 Identifications  43.2 Dates 
 43.3 Classification 
 43.4 Language  43.5 Citations  43.6 Fields Searched  43.7 Remarks Concerning Unity of Invention 
 43.8 Authorized Officer 
 43.9 Additional Matter  43.10 Form    Rule 44 Transmittal of the International Search Report, Etc. 
 44.1 Copies of Report or Declaration 
 44.2 Title or Abstract  44.3 Copies of Cited Documents    Rule 45 Translation of the International Search Report  45.1 Languages 
 
  Rule 46 Amendment of Claims before the International Bureau  46.1 Time Limit  46.2 Where to File  46.3 Language of Amendments 
 46.4 Statement 
 46.5 Form of Amendments    Rule 47 Communication to Designated Offices  47.1 Procedure  47.2 Copies 
 47.3 Languages 
 47.4 Express Request under Article 23 (2)    Rule 48 International Publication  48.1 Form 
 48.2 Contents 
 48.3 Languages  48.4 Earlier Publication on the Applicant’s Request  48.5 Notification of National Publication  48.6 Announcing of Certain Facts  
  Rule 49 Copy, Translation and Fee under Article 22 
 49.1 Notification  49.2 Languages 
 49.3 Statements under Article 19; Indications under Rule 13 bis.4 
 49.4 Use of National Form 
 49.5 Contents of and Physical Requirements for the Translation 
   Rule 50 Faculty under Article 22 (3)  50.1 Exercise of Faculty IP/N/1/AUS/P/6 
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  Rule 51 Review by Designated Offices  51.1 Time Limit for Presenting the Request to Send Copies  51.2 Copy of the Notice  51.3 Time Limit for Paying National Fee and Furnishing Translation 
 
  Rule 51 bis Certain National Requirements Allowed under Article 27 (1), (2), (6) and (7) 
 51 bis.1 Certain National Requirements Allowed 
 51 bis.2 Opportunity to Comply with National Requirements 
 
 Rule 52 Amendment of the Claims, the Descr iption, and the Drawings, before Designated 
Offices 
 52.1 Time Limit  
Part C: Rules Concerning Chapter II of the Treaty 
 
  Rule 53 The Demand  53.1 Form  53.2 Contents  53.3 The Petition  53.4 The Applicant 
 53.5 Agent or Common Representative 
 53.6 Identification of the International Application  53.7 Election of States  53.8 Signature  53.9 Statement Concerning Amendments 
 
  Rule 54 The Applicant Entitled to Make a Demand  54.1 Residence and Nationality  54.2 Right to Make a Demand  54.3 International Applications Filed with  the International Bureau as Receiving Office 
 54.4 Applicant Not Entitled to Make a Demand 
 
  Rule 55 Languages (International Preliminary Examination)  55.1 Language of Demand  55.2 Translation of International Application  55.3 Translation of Amendments 
 
  Rule 56 Later Elections  56.1 Elections Submitted Later Than the Demand  56.2 Identification of the International Application  56.3 Identification of the Demand  56.4 Form of Later Elections 
 56.5 Language of Later Elections 
   Rule 57 The Handling Fee  57.1 Requirement to Pay  57.2 Amount 
 57.3 Time Limit for Payment; Amount Payable 
 57.6 Refund    Rule 58 The Preliminary Examination Fee  IP/N/1/AUS/P/6 
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   58.1 Right to Ask for a Fee 
 58.3 Refund  
  Rule 58 bis Extension of Time Limits for Payment of Fees 
 58 bis.1 Invitation by the International Preliminary Examining Authority  
 58 bis.2 Late Payment Fee 
   Rule 59 The Competent Internatio nal Preliminary Examining Authority 
 59.1 Demands under Article 31 (2) ( a) 
 59.2 Demands under Article 31 (2) ( b) 
 59.3 Transmittal of Demand to the Compet ent International Preliminary Examining 
Authority 
   Rule 60 Certain Defects in the Demand or Elections  60.1 Defects in the Demand 
 60.2 Defects in Later Elections 
   Rule 61 Notification of the Demand and Elections  61.1 Notification to the International Bureau and the Applicant  61.2 Notification to the Elected Offices  61.3 Information for the Applicant 
 61.4 Publication in the Gazette 
   Rule 62 Copy of Amendments Under Article 19 for the International Preliminary Examining 
Authority 
 62.1 Amendments Made before the Demand is Filed 
 62.2 Amendments Made after the Demand is Filed 
   Rule 63 Minimum Requirements for International Preliminary Examining Authorities  63.1 Definition of Minimum Requirements    Rule 64 Prior Art for International Preliminary Examination 
 64.1 Prior Art 
 64.2 Non-Written Disclosures  64.3 Certain Published Documents    Rule 65 Inventive Step or Non-Obviousness 
 65.1 Approach to Prior Art 
 65.2 Relevant Date    Rule 66 Procedure before the Intern ational Preliminary Examining Authority 
 66.1 Basis of the International Preliminary Examination  66.2 First Written Opinion of the Intern ational Preliminary Examining Authority 
 66.3 Formal Response to the International Preliminary Examining Authority 
 66.4 Additional Opportunity for Submitting Amendments or Arguments 
 66.4 bis Consideration of Amendments and Arguments 
 66.5 Amendment  66.6 Informal Communications with the Applicant 
 66.7 Priority Document 
 66.8 Form of Amendments  66.9 Language of Amendments  IP/N/1/AUS/P/6 
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    Rule 67 Subject Matter under Article 34 (4) (a) (i) 
 67.1 Definition    Rule 68 Lack of Unity of Inventio n (International Preliminary Examination) 
 68.1 No Invitation to Restrict or Pay 
 68.2 Invitation to Restrict or Pay 
 68.3 Additional Fees  68.4 Procedure in the Case of Insu fficient Restriction of the Claims 
 68.5 Main Invention  
  Rule 69 Start of and Time Limit fo r International Preliminary Examination 
 69.1 Start of International Preliminary Examination  69.2 Time Limit for International Preliminary Examination    Rule 70 The International Preliminary Examination Report 
 70.1 Definition 
 70.2 Basis of the Report  70.3 Identifications  70.4 Dates  70.5 Classification  70.6 Statement under Article 35 (2) 
 70.7 Citations under Article 35 (2) 
 70.8 Explanations under Article 35 (2)  70.9 Non-Written Disclosures  70.10 Certain Published Documents  70.11 Mention of Amendments 
 70.12 Mention of Certain Defects and Other Matters 
 70.13 Remarks Concerning Unity of Invention  70.14 Authorized Officer  70.15 Form  70.16 Annexes to the Report  70.17 Languages of the Report and the Annexes 
 
  Rule 71 Transmittal of the Intern ational Preliminary Examination Report 
 71.1 Recipients  71.2 Copies of Cited Documents  
  Rule 72 Translation of the Intern ational Preliminary Examination Report 
 72.1 Languages  72.2 Copy of Translation for the Applicant  72.3 Observations on the Translation    Rule 73 Communication of the International Preliminary Examination Report 
 73.1 Preparation of Copies 
 73.2 Time Limit for Communication    Rule 74 Translations of Annexes of the International Preliminary Examination Report and 
Transmittal Thereof 
 74.1 Contents of Translation and Time Limit for Transmittal Thereof 
   Rule 76 Copy, Translation and Fee under Article 39 (1); Translation of Priority Document  76.4 Time Limit for Translation of Priority Document  IP/N/1/AUS/P/6 
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   76.5 Application of Rules 22.1 (g), 49 and 51 bis 
 76.6 Transitional Provision 
   Rule 77 Faculty under Article 39 (1) (b)  77.1 Exercise of Faculty 
 
  Rule 78 Amendment of the Claims, the Descrip tion, and the Drawings, before Elected Offices 
 78.1 Time Limit Where Election Is Effect ed prior to Expiration of 19 Months from 
Priority Date 
 78.2 Time Limit Where Election Is Effected After Expiration of 19 Months from Priority 
Date 
 78.3 Utility Models  
Part D: Rules Concerning Chapter III of the Treaty 
   Rule 79 Calendar 
 79.1 Expressing Dates    Rule 80 Computation of Time Limits  80.1 Periods Expressed in Years  80.2 Periods Expressed in Months 
 80.3 Periods Expressed in Days 
 80.4 Local Dates  80.5 Expiration on a Non-Working Day  80.6 Date of Documents  80.7 End of Working Day 
 
  Rule 81 Modification of Time Limits Fixed in the Treaty  81.1 Proposal  81.2 Decision by the Assembly  81.3 Voting by Correspondence  
  Rule 82 Irregularities in the Mail Service 
 82.1 Delay or Loss in Mail  82.2 Interruption in the Mail Service  
  Rule 82 bis Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits 
 82 bis.1 Meaning of “Time Limit” in Article 48 (2) 
 82 bis.2 Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies 
 
  Rule 82 ter Rectification of Errors Made by the Recei ving Office or by the International Bureau 
 82 ter.1 Errors Concerning the International Filing Date and the Priority Claim 
 
  Rule 83 Right to Practice before International Authorities 
 83.1 Proof of Right 
 83.1 bis Where the International Bureau is the Receiving Office 
 83.2 Information  Part E: Rules Concerning Chapter V of the Treaty 
 
  Rule 84 Expenses of Delegations IP/N/1/AUS/P/6 
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   84.1 Expenses Borne by Governments 
   Rule 85 Absence of Quorum in the Assembly  85.1 Voting by Correspondence  
  Rule 86 The Gazette 
 86.1 Contents and Form  86.2 Languages; Access to the Gazette  86.3 Frequency  86.4 Sale 
 86.5 Title 
 86.6 Further Details    Rule 87 Copies of Publications  87.1 International Searching and Preliminary Examining Authorities 
 87.2 National Offices 
   Rule 88 Amendment of the Regulations  88.1 Requirement of Unanimity  88.3 Requirement of Absence of Opposition by Certain States  88.4 Procedure 
 
  Rule 89 Administrative Instructions  89.1 Scope  89.2 Source  89.3 Publication and Entry into Force 
 
Part F: Rules Concerning Several Chapters of the Treaty 
 
  Rule 90 Agents and Common Representatives  90.1 Appointment as Agent  90.2 Common Representative 
 90.3 Effects of Acts by or in Relation to Agents and Common Representatives 
 90.4 Manner of Appointment of Agent or Common Representative  90.5 General Power of Attorney  90.6 Revocation and Renunciation  
  Rule 90 bis Withdrawals 
 90 bis.1 Withdrawal of the International Application 
 90 bis.2 Withdrawal of Designations 
 90 bis.3 Withdrawal of Priority Claims 
 90 bis.4 Withdrawal of the Demand, or of Elections 
 90 bis.5 Signature 
 90 bis.6 Effect of Withdrawal 
 90 bis.7 Faculty under Article 37 (4) ( b) 
   Rule 91 Obvious Errors in Documents  91.1 Rectification 
 
  Rule 92 Correspondence  92.1 Need for Letter and for Signature  IP/N/1/AUS/P/6 
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   92.2 Languages 
 92.3 Mailings by National Offices and Intergovernmental Organizations  92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.  
  Rule 92 bis Recording of Changes in Certain Indications in the Request or the Demand 
 92 bis.1 Recording of Changes by the International Bureau 
   Rule 93 Keeping of Records and Files  93.1 The Receiving Office  93.2 The International Bureau 
 93.3 The International Searching and Preliminary Examining Authorities 
 93.4 Reproductions    Rule 94 Access to Files  94.1 Access to the File Held  by the International Bureau 
 94.2 Access to the File Held by the Inte rnational Preliminary Examining Authority 
 94.3 Access to the File Held by the Elected Office    Rule 95 Availability of Translations  95.1 Furnishing of Copies of Translations  
  Rule 96 The Schedule of Fees 
 96.1 Schedule of Fees Annexed to Regulations 
 
Schedule of Fees IP/N/1/AUS/P/6 
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  REGULATIONS UNDER THE PATENT COOPERATION TREATY 
 
PART A 
 
Introductory Rules 
 
Rule 1  
Abbreviated Expressions 
 
1.1   Meaning of Abbreviated Expressions 
 
 ( a) In these Regulations, the word “Treaty” means the Patent Cooperation Treaty. 
  ( b) In these Regulations, the words “Chapter” a nd “Article” refer to the specified Chapter 
or Article of the Treaty. 
 
Rule 2 
Interpretation of Certain Words 
 
2.1   “Applicant” 
 
     Whenever the word “applican t” is used, it shall be construed as meaning also the agent or other 
representative of the applicant, except where the c ontrary clearly follows from the wording or the 
nature of the provision, or the context in which th e word is used, such as, in particular, where the 
provision refers to the residence or nationality of the applicant.  
2.2   “Agent” 
      Whenever the word “agent”  is used, it shall be construed as meaning an agent appointed under 
Rule 90.1, unless the contrary clearly follows from th e wording or the nature of the provision, or the 
context in which the word is used. 
 
2.2
bis   “Common Representative ” 
      Whenever the expression “common representativ e” is used, it shall be construed as meaning an 
applicant appointed as, or considered to be, the common representative under Rule 90.2. 
 
2.3   “Signature” 
      Whenever the word “signatu re” is used, it shall be understood th at, if the national law applied by 
the receiving Office or the competent Internationa l Searching or Preliminary Examining Authority 
requires the use of a seal instead of a signature, the word, for the purposes of that Office or Authority, 
shall mean seal. 
  IP/N/1/AUS/P/6 
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  PART B 
 
Rules Concerning Chapter I of the Treaty 
 
Rule 3 
The Request (Form) 
 
3.1   Form of Request 
      The request shall be made on a printe d form or be presented as a computer print-out. 
 
3.2   Availability of Forms 
      Copies of the printed form shall be furnishe d free of charge to the applicants by the receiving 
Office, or, if the receiving Office so d esires, by the International Bureau. 
 
3.3   Check List 
      (a) The request shall contain a list indicating: 
  (i) the total number of sheets constituting the international application and the number of 
the sheets of each element of the interna tional application: request, description 
(separately indicating the number of sheets of any sequence listing part of the description), claims, drawings, abstract; 
  (ii) where applicable, that the internati onal application as filed is accompanied by a 
power of attorney (i.e., a document appointing an agent or a common representative), 
a copy of a general power of attorney, a priority document, a sequence listing in 
computer readable form, a document relating to the payment of fees, or any other document (to be specified in the check list); 
  (iii) the number of that figure of the dr awings which the applicant suggests should 
accompany the abstract when the abstract is published; in exceptional cases, the 
applicant may suggest more than one figure. 
      (b) The list shall be completed by the applicant,  failing which the receiving Office shall make the 
necessary indications, except that the number referred to in paragraph (a ) (iii) shall not be indicated by 
the receiving Office. 
 
3.4   Particulars 
      Subject to Rule 3.3, particulars of the printed request form and of a request presented as a computer print-out shall be prescribed  by the Administrative Instructions. 
 
Rule 4 
The Request (Contents) 
 
4.1   Mandatory and Optional Contents; Signature 
 
     (a) The request shall contain: 
  (i) a petition,  IP/N/1/AUS/P/6 
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   (ii) the title of the invention, 
  (iii) indications concerning the applicant and the agent, if there is an agent, 
  (iv) the designation of States, 
 
 (v) indications concerning the inventor wher e the national law of at least one of the 
designated States requires that the name of the inventor be furnished at the time of 
filing a national application. 
 
     (b) The request shall, where applicable, contain: 
  (i) a priority claim,   (ii) a reference to any earlier internati onal, international-type or other search, 
 
 (iii) choices of certain kinds of protection,   (iv) an indication that the applicant wishes to obtain a regional patent,   (v) a reference to a parent application or a parent patent, 
 
 (vi) an indication of the applicant’s c hoice of competent International Searching 
Authority. 
      (c) The request may contain: 
 
 (i) indications concerning the inventor wher e the national law of none of the designated 
States requires that the name of the invent or be furnished at the time of filing a 
national application, 
  (ii) a request to the receiving Office to tran smit the priority document to the International 
Bureau where the application whose priority  is claimed was filed with the national 
Office or intergovernmental authority which is the receiving Office. 
      (d) The request shall be signed. 
 
4.2   The Petition 
      The petition shall be to the following effect  and shall preferably be worded as follows: “The 
undersigned requests that the present international a pplication be processed according to the Patent 
Cooperation Treaty.” 
 
4.3   Title of the Invention 
      The title of the invention shall be short (pre ferably from two to seven words when in English or 
translated into English) and precise. 
 
4.4   Names and Addresses 
      (a) Names of natural persons shall be indicated by  the person’s family name and given name(s), 
the family name being indicated before the given name(s).   IP/N/1/AUS/P/6 
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       (b) Names of legal entities shall be indicated  by their full, official designations. 
      (c) Addresses shall be indicated in such a way as to satisfy the customary requirements for 
prompt postal delivery at the indicated address and,  in any case, shall consist of all the relevant 
administrative units up to, and including, the house number, if any. Where the national law of the 
designated State does not require the indication of the house number, failure to indicate such number 
shall have no effect in that State. In order to  allow rapid communication with the applicant, it is 
recommended to indicate any teleprinter address,  telephone and facsimile machine numbers, or 
corresponding data for other like means of communica tion, of the applicant or, where applicable, the 
agent or the common representative. 
 
     (d) For each applicant, inventor, or agent, only one  address may be indicated, except that, if no 
agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if 
there is more than one applicant, the common repr esentative, may indicate, in addition to any other 
address given in the request, an address to  which notifications shall be sent. 
 
4.5   The Applicant 
      (a) The request shall indicate the name, address, nationality and residence of the applicant or, if 
there are several applicants, of each of them.  
     (b) The applicant’s nationality shall be indicated by the name of the State of which he is a 
national.       (c) The applicant’s residence shall be indicated by th e name of the State of which he is a resident. 
 
     (d) The request may, for different designated States,  indicate different applicants. In such a case, 
the request shall indicate the applicant or applican ts for each designated State or group of designated 
States. 
 
4.6   The Inventor 
 
     (a) Where Rule 4.1 ( a) (v) applies, the request shall indicate the name and address of the inventor 
or, if there are several inventors, of each of them.       (b) If the applicant is the inventor, the request , in lieu of the indication under paragraph ( a), shall 
contain a statement to that effect. 
 
     (c) The request may, for different designated St ates, indicate different persons as inventors 
where, in this respect, the requirements of the nati onal laws of the designated States are not the same. 
In such a case, the request shall contain a separate statement for each designated State or group of 
States in which a particular person, or the same pers on, is to be considered the inventor, or in which 
particular persons, or the same persons, are to be considered the inventors. 
 
4.7   The Agent 
      If agents are designated, the request shall so  indicate, and shall state their names and addresses. 
 
4.8   Common Representative 
      If a common representative is desi gnated, the request shall so indicate. 
 IP/N/1/AUS/P/6 
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  4.9   Designation of States 
      (a) Contracting States shall be designated in the request: 
  (i) in the case of designations for the pur pose of obtaining national patents, by an 
indication of each State concerned; 
  (ii) in the case of designations for the pur pose of obtaining a regional patent, by an 
indication that a regional patent is desired either for all Contracting States which are 
party to the regional patent treaty concerned or only for such Contracting States as are 
specified. 
      (b) The request may contain an indication that all designations which would be permitted under 
the Treaty, other than those made under paragraph ( a), are also made, provided that: 
 
 (i) at least one Contracting St ate is designated under paragraph ( a), and 
  (ii) the request also contains a statement th at any designation made under this paragraph 
is subject to confirmation as provided in paragraph ( c) and that any designation which 
is not so confirmed before the expiration of 15 months from the priority date is to be 
regarded as withdrawn by the applicant at the expiration of that time limit. 
 
     (c) The confirmation of any desi gnation made under paragraph ( b) shall be effected by 
  (i) filing with the receiving Office a written notice containing an i ndication as referred to 
in paragraph ( a) (i) or (ii), and 
 
 (ii) paying to the receiving Office the design ation fee and the confirmation fee referred to 
in Rule 15.5 
 within the time limit under paragraph (b) (ii). 
 
4.10   Priority Claim 
      (a) Any declaration referred to in Article 8 (1) (“pr iority claim”) may claim the priority of one or 
more earlier applications filed e ither in or for any country party to the Paris Convention for the 
Protection of Industrial Property or in or for any Me mber of the World Trade Organization that is not 
party to that Convention. Any priori ty claim shall, subject to Rule 26 bis.1, be made in the request;  it 
shall consist of a statement to the effect that the pr iority of an earlier application is claimed and shall 
indicate:   (i) the date on which the earlier applicati on was filed, being a date falling within the 
period of 12 months preceding the international filing date; 
 
 (ii) the number of the earlier application;   (iii) where the earlier application is a nationa l application, the country party to the Paris 
Convention for the Protection of Industrial Property or the Member 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  application, the authority entrusted with the 
granting of regional patents under the applicable regional patent treaty;  IP/N/1/AUS/P/6 
 Page 191 
 
 
   
 (v) where the earlier application is an intern ational application, the receiving Office with 
which it was filed. 
      (b) In addition to any indi cation required under paragraph (a) (iv) or (v): 
 
 (i) where the earlier application is a regional application or an international application, 
the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed; 
 
 (ii) where the earlier application is a regiona l application and at least one of the countries 
party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed. 
 
     (c) For the purposes of paragraphs (a) and (b), Article 2 (vi) shall not apply. 
      (d) If, on September 29, 1999, paragraphs ( a) and ( b) as amended with effect 
from January 1, 2000, are not compatible with the national law applied by a designated Office, those 
paragraphs as in force until Decembe r 31, 1999, shall continue to appl y after that date in respect of 
that designated Office for as long as the said paragr aphs as amended continue  not to be compatible 
with that law, provided that the said Office informs the International Bureau accordingly 
by October 31, 1999. The information received sha ll be promptly published by the International 
Bureau in the Gazette. 
 
4.11   Reference to Earlier Search 
      If an international or international-type sear ch has been requested on an application under Article 
15 (5) or if the applicant wishes the International Searching Authority to base the international search 
report wholly or in part on the results of a search, other than an internationa l or international-type 
search, made by the national Office or intergovern mental organization which is the International 
Searching Authority competent for the international application, the request shall contain a reference 
to that fact. Such reference shall either identify th e application (or its translation, as the case may be) 
in respect of which the earlier search was made by indicating country, date and number, or the said 
search by indicating, where applicable, date  and number of the request for such search. 
 
4.12   Choice of Certain Kinds of Protection 
      (a) If the applicant wishes his international applica tion to be treated, in any designated State, as 
an application not for a patent but for the grant of any of the other kinds of protection specified in Article 43, he shall so indicate in the request. For the purposes of this paragraph, Article 2 (ii) shall 
not apply. 
 
     (b) In the case provided for in Article 44, the app licant shall indicate the two kinds of protection 
sought, or, if one of two kinds of protection is primarily sought, he shall indicate which kind is sought 
primarily and which kind is sought subsidiarily. 
 
4.13   Identification of Parent Application or Parent Grant 
      If the applicant wishes his international app lication to be treated, in any designated State, as an 
application for a patent or certificate of addition, i nventor’s certificate of addition, or utility certificate 
of addition, he shall identify the parent application or the parent patent, parent inventor’s certificate, IP/N/1/AUS/P/6 
Page 192  
 
  or parent utility certificate to which the patent or certificate of addition, inventor’s certificate of 
addition, or utility certificate of addition, if gran ted, relates. For the purposes of this paragraph, 
Article 2 (ii) shall not apply. 
 
4.14   Continuation or Continuation in Part 
 
     If the applicant wishes his international app lication to be treated, in any designated State, as an 
application for a continuation or a continuation-in-part of an earlier application, he shall so indicate in 
the request and shall identify the parent application involved. 
 
4.14bis   Choice of International Searching Authority 
       If two or more International Searchi ng Authorities are competent for the searching of the 
international application, the applicant shall indi cate his choice of International Searching Authority 
in the request.  
4.15   Signature 
      (a) Subject to paragraph ( b), the request shall be signed by the applicant or, if there is more than 
one applicant, by all of them.  
     (b) Where two or more applicants file an intern ational application which designates a State whose 
national law requires that national app lications be filed by the inventor  and where an applicant for that 
designated State who is an inventor refused to sign the request or could not be found or reached after 
diligent effort, the request need not be signed by that applicant if it is signed by at least one applicant 
and a statement is furnished explaining, to the satis faction of the receiving Office, the lack of the 
signature concerned. 
 
4.16   Transliteration or Translation of Certain Words 
      (a) Where any name or address is written in character s other than those of the Latin alphabet, the 
same shall also be indicated in characters of th e Latin alphabet either as a mere transliteration or 
through translation into English. The applicant sha ll decide which words will be merely transliterated 
and which words will be so translated.       (b) The name of any country written in characters ot her than those of the Latin alphabet shall also 
be indicated in English.  
4.17   Additional Matter 
      (a) The request shall contain no matter other than that specified in Rules 4.1 to 4.16, provided 
that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the 
request of any additional matter specifie d in the Administrative Instructions. 
 
     (b) If the request contains matter other than that specified in Rules 4.1 to 4.16 or permitted under 
paragraph ( a) by the Administrative Instructions, the r eceiving Office shall ex officio delete the 
additional matter.   IP/N/1/AUS/P/6 
 Page 193 
 
 
  Rule 5 
The Description 
 
5.1   Manner of the Description 
 
     (a) The description shall first state the title of the invention as appearing in the request and shall: 
  (i) specify the technical field to which the invention relates;   (ii) indicate the background art which, as far as known to the applicant, can be regarded 
as useful for the understanding, searching a nd examination of the invention, and, 
preferably, cite the documents reflecting such art; 
  (iii) disclose the invention, as claimed, in su ch terms that the technical problem (even if 
not expressly stated as such) and its solution can be understood, and state the 
advantageous effects, if any, of the inve ntion with reference to the background art; 
  (iv) briefly describe the figures in the drawings, if any;   (v) set forth at least the best mode contem plated by the applicant for carrying out the 
invention claimed; this shall be done in terms of examples, where appropriate, and 
with reference to the drawings, if any; wh ere the national law of the designated State 
does not require the description of the best mode but is satisfied with the description 
of any mode (whether it is the best contempl ated or not), failure to describe the best 
mode contemplated shall have no effect in that State; 
 
 (vi) indicate explicitly, when it is not obvious from the description or nature of the 
invention, the way in which the invention is capable of exploitation in industry and 
the way in which it can be made and used, or , if it can only be used, the way in which 
it can be used; the term “industry” is to be  understood in its broadest sense as in the 
Paris Convention for the Protection of Industrial Property. 
 
     (b) The manner and order specified in paragraph ( a) shall be followed except when, because of 
the nature of the invention, a different manne r or a different order would result in a better 
understanding and a more economic presentation. 
      (c) Subject to the provisions of paragraph ( b), each of the parts referred to in paragraph ( a) shall 
preferably be preceded by an appropriate heading as suggested in the Administrative Instructions. 
 
5.2  Nucleotide and/or Amino Acid Sequence Disclosure 
      (a) Where the international application contains disclosure of one or more nucleotide and/or 
amino acid sequences, the description shall contain a sequence listing complying with the standard 
provided for in the Administrative Instructions and presented as a separate part of the description in 
accordance with that standard.       (b) Where the sequence listing part of the descrip tion contains any free text as defined in the 
standard provided for in the Administrative Instruc tions, that free text shall also appear in the main 
part of the description in the language thereof. 
 IP/N/1/AUS/P/6 
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  Rule 6 
The Claims 
 
6.1   Number and Numbering of Claims 
 
     (a) The number of the claims shall be reasonable in  consideration of the nature of the invention 
claimed.       (b) If there are several claims, they shall be  numbered consecutively in arabic numerals. 
 
     (c) The method of numbering in the case of the amendment of claims shall be governed by the 
Administrative Instructions. 
 
6.2   References to Other Parts of the International Application 
 
     (a) Claims shall not, except where ab solutely necessary, rely, in resp ect of the technical features 
of the invention, on references to the description or dr awings. In particular, they shall not rely on such 
references as: “as described in part . . . of the desc ription,” or “as illustrated in figure . . . of the 
drawings.”       (b) Where the international application contains dr awings, the technical features mentioned in the 
claims shall preferably be followed by the referenc e signs relating to such features. When used, the 
reference signs shall preferably be placed between parentheses. If inclusion of reference signs does 
not particularly facilitate quicke r understanding of a claim, it shoul d not be made. Reference signs 
may be removed by a designated Office for the purposes of publication by such Office. 
 
6.3   Manner of Claiming 
      (a) The definition of the matter for which protecti on is sought shall be in terms of the technical 
features of the invention.       (b) Whenever appropriate, claims shall contain: 
 
 (i) a statement indicating those technical features of the invention which are necessary 
for the definition of the claimed subject matter but which, in combination, are part of the prior art, 
 
 (ii) a characterizing portion—preceded by  the words “characterized in that,” 
“characterized by,” “wherein the improvement comprises,” or any other words to the same effect—stating concisely the technical features which, in combination with the 
features stated under (i), it is desired to protect. 
      (c) Where the national law of the designated State does not require the manner of claiming 
provided for in paragraph ( b), failure to use that manner of claiming shall have no effect in that State 
provided the manner of claiming actually used satisfies the national law of that State. 
 
6.4   Dependent Claims 
 
     (a) Any claim which includes all the features of one  or more other claims (claim in dependent 
form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the 
beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to mo re than one other claim (“multiple dependent claim”) shall refer to 
such claims in the alternative only. Multiple depende nt claims shall not serve as a basis for any other  IP/N/1/AUS/P/6 
 Page 195 
 
 
  multiple dependent claim. Where the national la w of the national Office acting as International 
Searching Authority does not allow multiple dependen t claims to be drafted in a manner different 
from that provided for in the preceding two senten ces, failure to use that manner of claiming may 
result in an indication under Article 17 (2) ( b) in the international search re port. Failure to use the said 
manner of claiming shall have no effect in a designated State if the manner of claiming actually used 
satisfies the national law of that State. 
      (b) Any dependent claim shall be construed as incl uding all the limitations contained in the claim 
to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained 
in the particular claim in relation to which it is considered. 
 
     (c) All dependent claims referring back to a singl e previous claim, and all dependent claims 
referring back to several previous claims, shall be  grouped together to the extent and in the most 
practical way possible. 
 
6.5   Utility Models 
      Any designated State in which the grant of a utility model is sought on the basis of an international 
application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules 
the provisions of its national law concerning utilit y models once the processing of the international 
application has started in that State, provided that  the applicant shall be allowed at least 2 months 
from the expiration of the time li mit applicable under Article 22 to adapt his application to the 
requirements of the said provisions of the national law.  
Rule 7 
The Drawings 
 7.1   Flow Sheets and Diagrams 
      Flow sheets and diagrams are considered drawings. 
 
7.2   Time Limit 
 
     The time limit referred to in Article 7 (2) ( ii) shall be reasonable under the circumstances of the 
case and shall, in no case, be shorter than 2 mont hs from the date of the written invitation requiring 
the filing of drawings or additional drawings under the said provision. 
 
Rule 8 
The Abstract 
 
8.1   Contents and Form of the Abstract 
      (a) The abstract shall consist of the following: 
 
 (i) a summary of the disclosure as contained in the description, the claims, and any 
drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way wh ich allows the clear understanding of the 
technical problem, the gist of the solution of that problem through the invention, and 
the principal use or uses of the invention; 
  (ii) where applicable, the chemical formul a which, among all the formulae contained in 
the international application, b est characterizes the invention. 
 IP/N/1/AUS/P/6 
Page 196  
 
       (b) The abstract shall be as concise as the disclosu re permits (preferably 50 to 150 words if it is in 
English or when translated into English).       (c) The abstract shall not contain statements on the alleged merits or value of the claimed 
invention or on its speculative application. 
 
     (d) Each main technical feature mentioned in th e abstract and illustrated by a drawing in the 
international application shall be followed by  a reference sign, placed between parentheses. 
 
8.2   Figure 
 
     (a) If the applicant fails to make the indication referred to in Rule 3.3 ( a) (iii), or if the 
International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the fi gures of all the drawings, better characterize the 
invention, it shall, subject to paragraph ( b), indicate the figure or figures which should accompany the 
abstract when the latter is publishe d by the International Bureau. In such case, the abstract shall be 
accompanied by the figure or figures so indicated  by the International Searching Authority. 
Otherwise, the abstract shall, subject to paragraph ( b), be accompanied by the figure or figures 
suggested by the applicant.       (b) If the International Searching Authority finds that  none of the figures of the drawings is useful 
for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, 
the abstract, when published by th e International Bureau, shall not be accompanied by any figure of 
the drawings even where the applicant has made a suggestion under Rule 3.3 ( a) (iii). 
 
8.3   Guiding Principles in Drafting 
 
     The abstract shall be so drafted that it can  efficiently serve as a scanning tool for purposes of 
searching in the particular art, especially by assi sting the scientist, engineer or researcher in 
formulating an opinion on whether there is a need fo r consulting the international application itself. 
 
Rule 9 
Expressions, Etc., Not To Be Used 
 
9.1   Definition 
      The international a pplication shall not contain: 
 
 (i) expressions or drawings contrary to morality;   (ii) expressions or drawings contrary to public order; 
  (iii) statements disparaging the products or processes of any particular person other than 
the applicant, or the merits or validity of applications or patents of any such person 
(mere comparisons with the prior art shall not be considered disparaging per se ); 
  (iv) any statement or other matter obvi ously irrelevant or unnecessary under the 
circumstances. 
 
9.2   Noting of Lack of Compliance 
      The receiving Office and the International S earching Authority may note lack of compliance with 
the prescriptions of Rule 9.1 and may suggest to the applicant that he voluntarily correct his  IP/N/1/AUS/P/6 
 Page 197 
 
 
  international application accordingly.  If the lack of compliance was noted by the receiving Office, that 
Office shall inform the competent International Sear ching Authority and the International Bureau; if 
the lack of compliance was noted by the Interna tional Searching Authority, that Authority shall 
inform the receiving Office and the International Bureau. 
 
9.3   Reference to Article 21 (6) 
      “Disparaging statements,” referred to in Ar ticle 21 (6), shall have the meaning as defined in 
Rule 9.1 (iii).  
Rule 10 
Terminology and Signs 
 
10.1   Terminology and Signs 
 
     (a) Units of weights and measures shall be expressed in terms of the metric system, or also 
expressed in such terms if first expressed in terms of a different system.       (b) Temperatures shall be expressed in degrees Cels ius, or also expressed in degrees Celsius if 
first expressed in a different manner.  
     (d) For indications of heat, energy, light, sound,  and magnetism, as well as for mathematical 
formulae and electrical units, the rules of intern ational practice shall be observed; for chemical 
formulae, the symbols, atomic weights, and molecu lar formulae, in general use, shall be employed. 
      (e) In general, only such technical terms, signs  and symbols should be used as are generally 
accepted in the art. 
      (f) When the international application or its tran slation is in Chinese, English or Japanese, the 
beginning of any decimal fraction shall be marked  by a period, whereas, when the international 
application or its translation is in a language othe r than Chinese, English or  Japanese, it shall be 
marked by a comma.  
10.2   Consistency 
      The terminology and the signs shall be c onsistent throughout the international application. 
 
Rule 11 
Physical Requirements of the International Application 
 
11.1   Number of Copies 
      (a) Subject to the provisions of paragraph ( b), the international application and each of the 
documents referred to in the check list (Rule 3.3 ( a) (ii)) shall be filed in one copy. 
      (b) Any receiving Office may require that the inte rnational application and any of the documents 
referred to in the check list (Rule 3.3 ( a) (ii)), except the receipt for th e fees paid or the check for the 
payment of the fees, be filed in two or three c opies. In that case, the receiving Office shall be 
responsible for verifying the identity of the sec ond and the third copies with the record copy. 
 IP/N/1/AUS/P/6 
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  11.2   Fitness for Reproduction 
      (a) All elements of the international application (i.e., the request, the description, the claims, the 
drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, 
electrostatic processes, photo offset, and microfilming, in any number of copies. 
 
     (b) All sheets shall be free from creases an d cracks; they shall not be folded. 
      (c) Only one side of each sheet shall be used. 
 
     (d) Subject to Rule 11.10 ( d) and Rule 11.13 ( j), each sheet shall be used in an upright position 
(i.e., the short sides at the top and bottom). 
 
11.3   Material to be Used 
 
     All elements of the international applicati on shall be on paper which shall be flexible, strong, 
white, smooth, non-shiny, and durable. 
 
11.4   Separate Sheets, Etc. 
      (a) Each element (request, description, claims, drawi ngs, abstract) of the international application 
shall commence on a new sheet. 
      (b) All sheets of international application shall be  so connected that they can be easily turned 
when consulted, and easily separated and joined ag ain if they have been separated for reproduction 
purposes.  
11.5   Size of Sheets 
      The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes pr ovided that the record copy, as transmitted to the 
International Bureau, and, if the competent Intern ational Searching Authority so desires, the search 
copy, shall be of A4 size. 
 
11.6   Margins 
      (a) The minimum margins of the sheets containing the description, the claims, and the abstract, 
shall be as follows: 
      —   top: 2 cm      —   left side: 2.5 cm      —   right side: 2 cm      —   bottom: 2 cm 
 
     (b) The recommended maximum, for the ma rgins provided for in paragraph ( a), is as follows: 
      —   top: 4 cm      —   left side: 4 cm 
     —   right side: 3 cm 
     —   bottom: 3 cm   IP/N/1/AUS/P/6 
 Page 199 
 
 
       (c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The 
sheets shall not contain frames around the usable or used surface. The minimum margins shall be as 
follows:       —   top: 2.5 cm 
     —   left side: 2.5 cm 
     —   right side: 1.5 cm      —   bottom: 1.0 cm       (d) The margins referred to in paragraphs ( a) to ( c) apply to A4-size sheets,  so that, even if the 
receiving Office accepts other sizes, the A4-size reco rd copy and, when so required, the A4-size 
search copy shall leave the aforesaid margins.       (e) Subject to paragraph ( f) and to Rule 11.8 ( b), the margins of the international application, 
when submitted, must be completely blank. 
 
     (f) The top margin may contain in the left-hand corner an indication of the applicant’s file 
reference, provided that the reference appears with in 1.5 cm from the top of the sheet. The number of 
characters in the applicant’s file reference shall not exceed the maximum fixed by the Administrative 
Instructions. 
 
11.7   Numbering of Sheets 
      (a) All the sheets contained in the internationa l application shall be numbered in consecutive 
arabic numerals.  
     (b) The numbers shall be centered at the top or bo ttom of the sheet, but shall not be placed in the 
margin. 
 
11.8   Numbering of Lines 
      (a) It is strongly recommended to number every fifth line of each sheet of the description, and of 
each sheet of claims. 
      (b) The numbers should appear in the right half of the left margin. 
 
11.9   Writing of Text Matter 
 
     (a) The request, the description, the claims and the abstract shall be typed or printed. 
      (b) Only graphic symbols and characters, chemical or mathematical formulae, and certain 
characters in the Chinese or Japanese language may, when necessary, be written by hand or drawn. 
 
     (c) The typing shall be 1-spaced. 
      (d) All text matter shall be in characters the cap ital letters of which are not less than 0.21 cm 
high, and shall be in a dark, indelible color, sa tisfying the requirements specified in Rule 11.2. 
 
     (e) As far as the spacing of the typing and the size of the characters are concerned, paragraphs ( c) 
and ( d) shall not apply to texts in the Chinese or Japanese language. 
 IP/N/1/AUS/P/6 
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  11.10    Drawings, Formulae, and Tables, in Text Matter 
      (a) The request, the description, the claims a nd the abstract shall not contain drawings. 
      (b) The description, the claims and the abstract ma y contain chemical or mathematical formulae. 
 
     (c) The description and the abstract may contain ta bles; any claim may contain tables only if the 
subject matter of the claim makes the use of tables desirable.       (d) Tables and chemical or mathematical formulae may be placed sideways on the sheet if they 
cannot be presented satisfactorily in  an upright position thereon; sheets on which tables or chemical or 
mathematical formulae are presented sideways shall be  so presented that the tops of the tables or 
formulae are at the left side of the sheet. 
 
11.11   Words in Drawings 
 
     (a) The drawings shall not contain text matter, ex cept a single word or wo rds, when absolutely 
indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of 
electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.  
     (b) Any words used shall be so placed that, if translated, th ey may be pasted over without 
interfering with any lines of the drawings. 
 
11.12    Alterations, Etc. 
 
     Each sheet shall be reasonably free from eras ures and shall be free from alterations, overwritings, 
and interlineations. Non-compliance with this Rule  may be authorized if the authenticity of the 
content is not in question and the requireme nts for good reproduction are not in jeopardy. 
 
11.13    Special Requirements for Drawings 
 
     (a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and 
well-defined, lines and strokes without colorings.       (b) Cross-sections shall be indicated by obli que hatching which should not impede the clear 
reading of the reference signs and leading lines. 
 
     (c) The scale of the drawings and the distinctness of  their graphical execution shall be such that a 
photographic reproduction with a linear reduction in size to two-thirds would enable all details to be 
distinguished without difficulty.       (d) When, in exceptional cases, the scale is gi ven on a drawing, it shall be represented 
graphically. 
      (e) All numbers, letters and refere nce lines, appearing on the drawings, shall be simple and clear. 
Brackets, circles or inverted commas shall not be  used in association with numbers and letters. 
 
     (f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments. 
      (g) Each element of each figure shall be in proper proportion to each of the other elements in the 
figure, except where the use of a different proportio n is indispensable for the clarity of the figure. 
 IP/N/1/AUS/P/6 
Page 201 
 
 
     (h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of 
drawings, the Latin and, where customary, the Greek alphabets shall be used.       (i) The same sheet of drawings may contain sever al figures. Where figures on two or more sheets 
form in effect a single complete figure, the figur es on the several sheets shall be so arranged that the 
complete figure can be assembled without concealing any part of any of the figures appearing on the 
various sheets.       (j) The different figures shall be arranged on a sheet  or sheets without wasting space, preferably 
in an upright position, clearly separated from one a nother. Where the figures are not arranged in an 
upright position, they shall be presen ted sideways with the top of the figures at the left side of the 
sheet.       (k) The different figures shall be numbered in ar abic numerals consecutively and independently 
of the numbering of the sheets. 
 
     (l) Reference signs not mentioned in the description shall not appear in the drawings, and vice 
versa . 
      (m) The same features, when denoted by referenc e signs, shall, throughout the international 
application, be denoted by the same signs. 
 
     (n) If the drawings contain a large number of reference signs, it is strongly recommended to 
attach a separate sheet listing all reference signs and the features denoted by them. 
 
11.14  Later Documents  
 
     Rules 10, and 11.1 to 11.13, also apply to  any document—for example, corrected pages, amended 
claims, translations—submitted after the f iling of the international application. 
 
Rule 12 
Language of the International Application 
and Translation for the Purposes of International Search 
 
12.1   Languages Accepted for the Filin g of International Applications 
      (a) An international application shall be filed in any language which the receiving Office accepts 
for that purpose. 
      (b) Each receiving Office shall, for the filing of international applications, accept at least one 
language which is both:   (i) a language accepted by the International S earching Authority, or, if applicable, by at 
least one of the International Searching Au thorities, competent for the international 
searching of international applications filed with that receiving Office, and 
  (ii) a language of publication.  
     (c) Notwithstanding paragraph ( a), the request shall be filed in a language which is both a 
language accepted by the receiving Office under th at paragraph and a language of publication. 
      (d) Notwithstanding paragraph ( a), any text matter contained in the sequence listing part of the 
description referred to in Rule 5.2 (a) shall be pres ented in accordance with th e standard provided for 
in the Administrative Instructions. IP/N/1/AUS/P/6 
Page 202  
 
 
12.2   Language of Changes in the International Application 
      (a) Any amendment of the international applica tion shall, subject to Rules 46.3, 55.3 and 66.9, be 
in the language in which the application is filed. 
 
     (b) Any rectification under Rule 91.1 of an obvious error in the international application shall be 
in the language in which the application is filed, provided that:   (i) where a translation of the internationa l application is required under Rule 12.3 (a), 
48.3 (b) or 55.2 (a), rectifications referred to in Rule 91.1 (e) (ii) and (iii) shall be 
filed in both the language of the applica tion and the language of that translation; 
 
 (ii) where a translation of the request is required under Rule 26.3 ter (c), rectifications 
referred to in Rule 91.1 (e) (i) need only be filed in the language of that translation. 
 
     (c) Any correction under Rule 26 of a defect in th e international application shall be in the 
language in which the international application is fi led.  Any correction under Rule 26 of a defect in a 
translation of the international application furnished under Rule 12.3 or 55.2 (a), or in a translation of 
the request furnished under Rule 26.3ter (c), sh all be in the language of the translation. 
 
12.3   Translation for the Purpo ses of International Search 
      (a) Where the language in which the internationa l application is filed is not accepted by the 
International Searching Authority that is to carry  out the international search, the applicant shall, 
within one month from the date of receipt of th e international application by the receiving Office, 
furnish to that Office a translation of the internati onal application into a language which is all of the 
following:   (i) a language accepted by that Authority, and   (ii) a language of publication, and 
 
 (iii) a language accepted by the receivi ng Office under Rule 12.1 (a), unless the 
international application is filed in a language of publication. 
      (b) Paragraph (a) shall not apply to the request nor  to any sequence listing part of the description. 
 
     (c) Where, by the time the receiving Office sends to the applicant the notification under 
Rule 20.5 (c), the applicant has not furnished a tr anslation required under paragraph (a), the receiving 
Office shall, preferably together with that notification, invite the applicant: 
  (i) to furnish the required translation within the time limit under paragraph (a); 
 
 (ii) in the event that the required translati on is not furnished within the time limit under 
paragraph (a), to furnish it and to pay, where applicable, the late furnishing fee 
referred to in paragraph (e),  within one month from the date of the invitation or two 
months from the date of receipt of the international application by the receiving 
Office, whichever expires later. 
      (d) Where the receiving Office has sent to the applicant an invitation under paragraph (c) and the 
applicant has not, within the applicable time li mit under paragraph (c) (ii) , furnished the required 
translation and paid any required late furnishing fee,  the international applica tion shall be considered IP/N/1/AUS/P/6 
Page 203 
 
 
withdrawn and the receiving Office shall so declare.  Any translation and any payment received by the 
receiving Office before that Office makes the declar ation under the previous sentence and before the 
expiration of 15 months from the prio rity date shall be considered to  have been received before the 
expiration of that time limit.  
     (e) The furnishing of a translation after the expiration of the time limit under paragraph (a) may 
be subjected by the receiving Office to the payment to  it, for its own benefit, of a late furnishing fee 
equal to 50% of the basic fee.  
Rule 13 
Unity of Invention 
 
13.1   Requirement 
      The international application shall relate to one invention only or to a group of inventions so linked 
as to form a single general inventive concept (“requirement of unity of invention”). 
 
13.2   Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled 
      Where a group of inventions is claimed in  one and the same international application, the 
requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a 
technical relationship among those inventions i nvolving one or more of the same or corresponding 
special technical features. The expression “special  technical features” shall mean those technical 
features that define a contribution which each of th e claimed inventions, considered as a whole, makes 
over the prior art. 
 
13.3   Determination of Unity of Invention Not Affected by Manner of Claiming 
      The determination whether a group of inventions  is so linked as to form a single general inventive 
concept shall be made without regard to whether th e inventions are claimed in  separate claims or as 
alternatives within a single claim. 
 
13.4   Dependent Claims 
      Subject to Rule 13.1, it shall be permitted to include in th e same international application a 
reasonable number of dependent claims, claiming sp ecific forms of the invention claimed in an 
independent claim, even where the features of any dependent claim could be considered as 
constituting in themselves an invention. 
 
13.5   Utility Models 
      Any designated State in which the grant of a utility model is sought on the basis of an international 
application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules 
the provisions of its national law concerning utilit y models once the processing of the international 
application has started in that State, provided that  the applicant shall be allowed at least 2 months 
from the expiration of the time li mit applicable under Article 22 to adapt his application to the 
requirements of the said provisions of the national law.  
Rule 13
bis 
Inventions Relating to Biological Material 
 
13bis.1   Definition 
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     For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of biological material with a depositary 
institution or to the biological material so deposited. 
 
13bis.2   References (General) 
 
     Any reference to deposited biological material sh all be made in accordance with this Rule and, if 
so made, shall be considered as satisfying the re quirements of the national law of each designated 
State. 
 
13bis.3   References: Contents; Failure to  Include Reference or Indication 
      (a) A reference to deposited biological material shall indicate: 
  (i) the name and address of the depositary institution with which the deposit was made; 
 
 (ii) the date of deposit of the biological material with that institution;   (iii) the accession number given to the deposit by that institution; and   (iv) any additional matter of which the Intern ational Bureau has been notified pursuant to 
Rule 13 bis.7 (a) (i), provided that the requirement to indicate that matter was 
published in the Gazette in accordance with Rule 13 bis.7 (c) at least two months 
before the filing of the international application. 
      (b) Failure to include a reference to deposited bi ological material or failure to include, in a 
reference to deposited biological material, an indica tion in accordance with paragraph (a), shall have 
no consequence in any designated State whose nationa l law does not require such reference or such 
indication in a national application. 
 
13bis.4   References: Time Limit for Furnishing Indications 
 
     (a) Subject to paragraphs (b) and (c), if an y of the indications referred to in Rule 13 bis.3 (a) is not 
included in a reference to deposited biological material  in the international application as filed but is 
furnished to the International Bureau:    (i) within 16 months from the priority date, the indication shall be considered by any 
designated Office to have been furnished in time; 
  (ii) after the expiration of 16 months from the priority date, the indication shall be 
considered by any designated Office to have  been furnished on the last day of that 
time limit if it reaches the International Bu reau before the technical preparations for 
international publication have been completed. 
 
     (b) If the national law applicable by a designate d Office so requires in respect of national 
applications, that Office may require that any of the indications referred to in Rule 13 bis.3 (a) be 
furnished earlier than 16 months from the priority date, provided that the International Bureau has 
been notified of such requirement pursuant to Rule 13 bis.7 (a) (ii) and has published such requirement 
in the Gazette in accordance with Rule 13 bis.7 (c) at least two months before the filing of the 
international application.  IP/N/1/AUS/P/6 
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     (c) Where the applicant makes a request for early  publication under Article 21 (2) (b), any 
designated Office may consider any indication not fu rnished before the technical preparations for 
international publication have been comple ted as not having been furnished in time. 
      (d) The International Bureau sh all notify the applicant of the date on which it received any 
indication furnished unde r paragraph (a), and 
  (i) if the indication was received before th e technical preparations for international 
publication have been completed, indicate th at date, and include the relevant data 
from the indication, in the pamphlet published under Rule 48; 
 
 (ii) if the indication was received after the technical preparations for international 
publication have been completed, notify th at date and the relevant data from the 
indication to the designated Offices. 
 
13bis.5   References and Indications for the Purposes of One or More Designated States; Different 
Deposits for Different Designated States; Deposits with Depositary Institutions other than Those 
Notified 
 
     (a) A reference to deposited biological material sha ll be considered to be made for the purposes 
of all designated States, unless it is expressly made for the purposes of certain of the designated States 
only;  the same applies to the indi cations included in the reference. 
      (b) References to different deposits of the biological material may be made for different 
designated States.  
     (c) Any designated Office may disregard a deposit ma de with a depositary institution other than 
one notified by it under Rule 13 bis.7 (b). 
 
13bis.6   Furnishing of Samples 
      Pursuant to Articles 23 and 40, no furnishing of samples of the deposited biological material to 
which a reference is made in an international app lication shall, except with the authorization of the 
applicant, take place before the expiration of the a pplicable time limits afte r which national processing 
may start under the said Articles.  However, wher e the applicant performs the acts referred to in 
Articles 22 or 39 after international publication but be fore the expiration of the said time limits, the 
furnishing of samples of the deposited biological material may take place, once the said acts have 
been performed.  Notwithstanding the previous prov ision, the furnishing of samples of the deposited 
biological material may take place under the national law applicable by any d esignated Office as soon 
as, under that law, the international publication has the effects of the compulsory national publication 
of an unexamined national application. 
 
13bis.7   National Requirements: Notification and Publication 
 
     (a) Any national Office may notify the International Bureau of any requirement of the national 
law:   (i) that any matter specified in the notifi cation, in addition to those referred to in 
Rule 13 bis.3 (a) (i), (ii) and (iii), is required to  be included in a reference to deposited 
biological material in a national application; 
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 (ii) that one or more of the indications referred to in Rule 13 bis.3 (a) are required to be 
included in a national application as filed or are required to be furnished at a time 
specified in the notification which is earlier than 16 months from the priority date. 
      (b) Each national Office shall notify the Internati onal Bureau of the depositary institutions with 
which the national law permits depos its of biological materials to be made for the purposes of patent 
procedure before that Office or, if the national la w does not provide for or permit such deposits, of 
that fact.       (c) The International Bureau shall promptly pub lish in the Gazette requirements notified to it 
under paragraph ( a) and information notified to it under paragraph ( b). 
 
Rule 13
ter 
Nucleotide and/or Amino Acid Sequence Listings 
 
13ter.1  Sequence Listing for International Authorities 
      (a) Where the International Searching Authority finds  that the international application contains 
disclosure of one or more nucleotide and/or amino acid sequences but:   
 (i) the international application does not contain a sequence listing complying with the 
standard provided for in the Administrative Instructions, that Authority may invite the 
applicant to furnish to it, within a time li mit fixed in the invitation, a sequence listing 
complying with that standard; 
 
 (ii) the applicant has not already furnished a sequence listing in computer readable form 
complying with the standard provided for in the Administrative Instructions, that 
Authority may invite the applicant to furnish to it, within a time limit fixed in the invitation, a sequence listing in such a form complying with that standard. 
 
     (c) If the applicant does not comply with an invita tion under paragraph (a) within the time limit 
fixed in the invitation, the International Searchi ng Authority shall not be required to search the 
international application to the extent that su ch non-compliance has the result that a meaningful 
search cannot be carried out.       (d) Where the International Searching Authority fi nds that the description does not comply with 
Rule 5.2 (b), it shall invite the applicant to file  the required correction.  Rule 26.4 shall apply mutatis 
mutandis  to any correction offered by the applicant.  The International Searching Authority shall 
transmit the correction to the receiving O ffice and to the International Bureau. 
      (e) Paragraphs (a) and (c) shall apply mutatis mutandis  to the procedure before the International 
Preliminary Examining Authority. 
      (f) Any sequence listing not contained in the interna tional application as filed shall not, subject to 
Article 34, form part of th e international application. 
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13ter.2  Sequence Listing for Designated Office 
      Once the processing of the international a pplication has started before a designated Office, 
Rule 13 ter.1 (a) shall apply mutatis mutandis  to the procedure before that Office.  No designated 
Office shall require the applicant to furnish to  it a sequence listing other than a sequence listing 
complying with the standard provided for in the Administrative Instructions. 
 
Rule 14 
The Transmittal Fee 
 14.1   The Transmittal Fee 
      (a) Any receiving Office may require that the appli cant pay a fee to it, for its own benefit, for 
receiving the international application, transmitti ng copies to the International Bureau and the 
competent International Searching Authority, and performing all the other tasks which it must 
perform in connection with the international application in its capacity of receiving Office 
(“transmittal fee”).       (b) The amount of the transmittal fee, if any, shall be fixed by the receiving Office. 
 
     (c) The transmittal fee shall be paid within one m onth from the date of receipt of the international 
application.  The amount payable shall be the amount applicable on that date of receipt. 
 
Rule 15 
The International Fee 
 
15.1   Basic Fee and Designation Fee 
      Each international application shall be subj ect to the payment of a fee for the benefit of the 
International Bureau (“international fee”) to be collected by the receiving Office and consisting of, 
 
 (i) a “basic fee,” and 
  (ii) as many “designation fees” as there are national patents and regional patents sought 
under Rule 4.9 (a), except that, where Article  44 applies in respect of a designation, 
only one designation fee shall be due for that designation, and that the Schedule of 
Fees may indicate a maximum number of designation fees payable. 
 
15.2   Amounts 
      (a) The amounts of the basic fee and of the designation fee are as set out in the Schedule of Fees. 
 
     (b) The basic fee and the designation fee shall be pa yable in the currency or one of the currencies 
prescribed by the receiving Office (“prescribed curre ncy”), it being understood that, when transferred 
by the receiving Office to the International Bureau , they shall be freely convertible into Swiss 
currency.  The amounts of the basic fee and of the designation fee shall be established, for each 
receiving Office which prescribes the payment of those fees in any currency other than Swiss 
currency, by the Director General after consulta tion with the receiving Office of, or acting under 
Rule 19.1 (b) for, the State who se official currency is the same as the prescribed currency.  The 
amounts so established shall be the equivalents, in round figures, of the amounts in Swiss currency set 
out in the Schedule of Fees.  They shall be notifie d by the International Bureau to each receiving 
Office prescribing payment in that prescribed currency and shall be published in the Gazette.  IP/N/1/AUS/P/6 
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     (c) Where the amounts of the fees set out in the Schedule of Fees are changed, the corresponding 
amounts in the prescribed currencies shall be applie d from the same date as the amounts set out in the 
amended Schedule of Fees.       (d) Where the exchange rate between Swiss cu rrency and any prescribed currency becomes 
different from the exchange rate last applied, th e Director General shall establish new amounts in the 
prescribed currency according to directives given by the Assembly.  The newly established amounts 
shall become applicable two months after the date of their publication in the Gazette, provided that the 
receiving Office referred to in the second sentence of paragraph (b) and the Director General may 
agree on a date falling during the said two-month period, in which case the said amounts shall become 
applicable from that date. 
 
15.4   Time Limit for Payment;  Amount Payable 
      (a) The basic fee shall be paid within one month from the date of receipt of the international 
application.  The amount payable shall be the amount applicable on that date of receipt. 
      (b) The designation fee shall be paid within a time limit of: 
  (i) one year from the priority date, or  
 (ii) one month from the date of receipt of th e international application if that one-month 
period expires later than one year from the priority date. 
      (c) Where the designation fee is paid before the e xpiration of one month from the date of receipt 
of the international application, the amount payabl e shall be the amount applicable on that date of 
receipt.  Where the time limit under paragraph (b) (i) applies and the designation fee is paid before the 
expiration of that time limit but later than one m onth from the date of receipt of the international 
application, the amount payable shall be the amount applicable on the date of payment. 
 
15.5   Fees under Rule 4.9 (c) 
 
     (a) Notwithstanding Rule 15.4 (b), the confirmation under Rule 4.9 (c) of any designations made 
under Rule 4.9 (b) shall be subject to the payment to the receiving Office of as many designation fees 
(for the benefit of the International Bureau) as th ere are national patents and regional patents sought 
by the applicant by virtue of the confirmation, toge ther with a confirmation fee (for the benefit of the 
receiving Office) equal to 50% of the sum of the de signation fees payable under this paragraph.  Such 
fees shall be payable in respect of each designati on so confirmed, even if the maximum number of 
designation fees referred to in item 2 (a) of the Sche dule of Fees is already payable or if a designation 
fee is already payable in respect of the designation un der Rule 4.9 (a) of the same State for a different 
purpose.       (b) Where moneys paid by the applicant within the time limit under Rule 4.9 ( b) (ii) are not 
sufficient to cover the fees due under paragraph ( a), the receiving Office shall allocate any moneys 
paid as specified by the applican t or, in the absence of such sp ecification, as prescribed by the 
Administrative Instructions. 
 
15.6   Refund 
 
 The receiving Office shall refund the international fee to the applicant:   (i) if the determination unde r Article 11 (1) is negative, 
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 (ii) if, before the transmittal of the reco rd copy to the International Bureau, the 
international application is withdr awn or considered withdrawn, or 
  (iii) if, due to prescriptions concerning nati onal security, the international application is 
not treated as such. 
 
Rule 16 
The Search Fee 
 
16.1   Right to Ask for a Fee 
 
     (a) Each International Searching Authority may requi re that the applicant pay a fee (“search fee”) 
for its own benefit for carrying out the interna tional search and for performing all other tasks 
entrusted to International Searching Aut horities by the Treaty and these Regulations. 
 
     (b) The search fee shall be collected by the receivi ng Office.  The said fee shall be payable in the 
currency or one of the currencies prescribed by that Office (“receiving Office currency”), it being understood that, if any receiving Office currency is not that, or one of those, in which the International 
Searching Authority has fixed the said fee (“fixed currency”), it shall, when transferred by the 
receiving Office to the International Searching Author ity, be freely convertible into the currency of 
the State in which the International Searchi ng Authority has its headquarters (“headquarters 
currency”).  The amount of the search fee in an y receiving Office currency, other than the fixed 
currency, shall be established by the Director Gene ral after consultation with  the receiving Office of, 
or acting under Rule 19.1 (b) for, the State whose offi cial currency is the same as the receiving Office 
currency.  The amounts so established shall be th e equivalents, in round figures, of the amount 
established by the International Searching Authority in the headquarters currency.  They shall be 
notified by the International Bur eau to each receiving Office prescribing payment in that receiving 
Office currency and shall be published in the Gazette.       (c) Where the amount of the search fee in the headquarters currency is changed, the 
corresponding amounts in the receiving Office currencies,  other than the fixed currency or currencies, 
shall be applied from the same date as the changed amount in the headquarters currency. 
 
     (d) Where the exchange rate between the h eadquarters currency and any receiving Office 
currency, other than the fixed currency or currencie s, becomes different from the exchange rate last 
applied, the Director General shall establish the new amount in the said receiving Office currency 
according to directives given by the Assembly .  The newly established amount shall become 
applicable two months after its publication in th e Gazette, provided that any receiving Office referred 
to in the third sentence of paragraph (b) and the Director General may agree on a date falling during 
the said two-month period, in which case the said amount shall become applicable for that Office 
from that date.       (e) Where, in respect of the payment of the search  fee in a receiving Office currency, other than 
the fixed currency or currencies, the amount act ually received by the International Searching 
Authority in the headquarters currency is less than th at fixed by it, the difference will be paid to the 
International Searching Authority by the Intern ational Bureau, whereas, if the amount actually 
received is more, the difference will belong to the International Bureau.  
     (f) As to the time limit for payment of the search fee and the amount payable, the provisions of 
Rule 15.4 (a) relating to the basic fee shall apply mutatis mutandis . 
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16.2   Refund 
      The receiving Office shall re fund the search fee to the applicant: 
  (i) if the determination unde r Article 11 (1) is negative, 
 
 (ii) if, before the transmittal of the search co py to the International Searching Authority, 
the international application is wit hdrawn or considered withdrawn, or 
  (iii) if, due to prescriptions concerning nati onal security, the international application is 
not treated as such. 
 
16.3   Partial Refund 
      Where the international application claims the priority of an earlier international application which 
has been the subject of an intern ational search by the same Interna tional Searching Authority, that 
Authority shall refund the search fee paid in connection with the later international application to the 
extent and under the conditions provided for in the agreement under Article 16 (3) ( b), if the 
international search report on the later international a pplication could wholly or partly be based on the 
results of the international search effect ed on the earlier international application.  
 
Rule 16
bis 
Extension of Time Limits for Payment of Fees 
 
16bis.1  Invitation by the Receiving Office 
 
     (a) Where, by the time they are due under Rules 14.1 (c), 15.4 (a) and 16.1 (f), the receiving 
Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the 
transmittal fee, the basic fee and the search fee, the receiving Office sha ll invite the applicant to pay to 
it the amount required to cover those fees, together with, where applicable, the late payment fee under 
Rule 16bis.2, within a time limit of one month from the date of the invitation. 
      (b) Where, by the time they are due under Rule 15. 4 (b), the receiving Office finds that no fees 
were paid to it, or that the amount paid to it is insufficient to cover the designation fees necessary to 
cover all the designations under Rule 4.9 (a), the rece iving Office shall invite the applicant to pay to it 
the amount required to cover those fees, together with, where applicable, the late payment fee under 
Rule 16
bis.2, within a time limit of one month from the date of the invitation.  The amount payable in 
respect of any designation fee shall be the amount applicable on the last day of the one-year period from the priority date if the time limit under Rule 15.4 (b) (i) applies or the amount applicable on the 
date of receipt of the international application if  the time limit under Rule 15.4 (b) (ii) applies. 
 
     (c) Where the receiving Office has sent to the app licant an invitation under paragraph (a) or (b) 
and the applicant has not, within th e time limit referred to in that pa ragraph, paid in full the amount 
due, including, where applicable, the late payment fee under Rule 16
bis.2, the receiving Office shall, 
subject to paragraph (d): 
 
 (i) allocate any moneys paid as specified by  the applicant or, in the absence of such 
specification, as prescribed by th e Administrative Instructions, 
  (ii) make the applicable decl aration under Article 14 (3), and 
 
 (iii) proceed as provided in Rule 29.  IP/N/1/AUS/P/6 
Page 211 
 
 
     (d) Any payment received by the receiving Office be fore that Office sends the invitation under 
paragraph (a) or (b) shall be consid ered to have been received before the expiration of the time limit 
under Rule 14.1 (c), 15.4 (a) or (b) or 16.1 (f), as the case may be. 
      (e) Any payment received by the receiving Office before that Office makes the applicable 
declaration under Article 14 (3) shall be considered to  have been received before the expiration of the 
time limit referred to in paragraph (a) or (b). 
 
16
bis.2  Late Payment Fee 
 
     (a) The payment of fees in response to an invitation under Rule 16bis.1 (a) or (b) may be 
subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee.  The 
amount of that fee shall be:  
 (i) 50% of the amount of unpaid fees which is specified in the invitation, or, 
  (ii) if the amount calculated under item (i) is less than the transmittal fee, an amount 
equal to the transmittal fee. 
      (b) The amount of the late payment fee shall not, however, exceed the amount of the basic fee 
referred to in item 1(a) of the Schedule of Fees. 
 
Rule 17 
The Priority Document 
 
17.1  Obligation to Submit Copy of Earlier National or International Application 
      (a) Where the priority of an earlier national or  international application is claimed under 
Article 8, a copy of that earlier application, certif ied by the authority with which it was filed (“the 
priority document”), shall, unless already file d with the receiving Office together with the 
international application in which the priority cl aim is made, and subject to paragraph (b), be 
submitted by the applicant to the International Bur eau or to the receiving Office not later than 
16 months after the priority date, provided that a ny copy of the said earlier application which is 
received by the International Bureau after the expirati on of that time limit shall be considered to have 
been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of th e international application. 
 
     (b) Where the priority document is  issued by the receiving Office, the applicant may, instead of 
submitting the priority document, request the recei ving Office to prepare and transmit the priority 
document to the International Bureau.  Such request shall be made not later than 16 months after the 
priority date and may be subjected by the receiving Office to the payment of a fee. 
 
     (c) If the requirements of neither of the two preceding paragraphs are complied with, any 
designated State may disregard the priority claim, provided that no designated Office shall disregard 
the priority claim before giving the applicant an oppor tunity to furnish the priority document within a 
time limit which shall be reasonable under the circumstances. 
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17.2   Availability of Copies 
      (a) Where the applicant has complied with Rule 17.1 (a ) or (b), the International Bureau shall, at 
the specific request of the designated Office, promptly  but not prior to the international publication of 
the international application, furnish a copy of the priority document to that Office.  No such Office 
shall ask the applicant himself to furnish it with a c opy.  The applicant shall not be required to furnish 
a translation to the designated Office before th e expiration of the applicable time limit under 
Article 22.  Where the applicant makes an express request to the designated Office under 
Article 23 (2) prior to the international publication of  the international application, the International 
Bureau shall, at the specific request  of the designated Office, furnish a copy of the priority document 
to that Office promptly after receiving it. 
      (b) The International Bureau shall not make copi es of the priority document available to the 
public prior to the international publica tion of the international application. 
 
     (c) Where the international application has been  published under Article 21, the International 
Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:   (i) the international application was withdrawn,  
 (ii) the relevant priority claim wa s withdrawn or considered, under Rule 26 bis.2 (b), not 
to have been made. 
 
Rule 18 
The Applicant 
 18.1   Residence and Nationality 
      (a) Subject to the provisions of paragraphs ( b) and ( c), the question whether an applicant is a 
resident or national of the Contracting State of wh ich he claims to be a resident or national shall 
depend on the national law of that State a nd shall be decided by the receiving Office. 
 
     (b) In any case, 
  (i) possession of a real and effective industrial or commercial establishment in a 
Contracting State shall be considered residence in that State, and 
 
 (ii) a legal entity constituted according to the national law of a Contracting State shall be 
considered as a national of that State. 
      (c) Where the international application is filed w ith the International Bureau as receiving Office, 
the International Bureau shall, in the circumstan ces specified in the Administrative Instructions, 
request the national Office of, or acting for, the Contracting State concerned to decide the question 
referred to in paragraph ( a). The International Bureau shall info rm the applicant of any such request. 
The applicant shall have an opportunity to submit arguments directly to the national Office. The 
national Office shall decide the said question promptly. 
 
18.3   Two or More Applicants 
      If there are two or more applicants, the right to file an international application shall exist if at least 
one of them is entitled to file an intern ational application according to Article 9. 
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18.4   Information on Requirements Under National Law as to Applicants 
      (c) The International Bureau shall, from time to  time, publish information on the various national 
laws in respect of the question who is qualified (inventor, successor in title of  the inventor, owner of 
the invention, or other) to file a national app lication and shall accompany such information by a 
warning that the effect of the international appli cation in any designated State may depend on whether 
the person designated in the intern ational application as applicant for the purposes of that State is a 
person who, under the national law of that State,  is qualified to file a national application. 
 
Rule 19 
The Competent Receiving Office 
 
19.1   Where to File 
      (a) Subject to the provisions of paragraph ( b), the international application shall be filed, at the 
option of the applicant, 
  (i) with the national Office of or acting for the Contracting State of which the applicant 
is a resident, 
  (ii) with the national Office of or acting for the Contracting State of which the applicant 
is a national, or 
  (iii) irrespective of the Contracting State of which the applicant is a resident or national, 
with the International Bureau. 
 
     (b) Any Contracting State may agree with another Contracting State or any intergovernmental 
organization that the national Office of the latter Stat e or the intergovernmental organization shall, for 
all or some purposes, act instead of the national Office of the former State as receiving Office for applicants who are residents or nationals of that former State. Notwithstanding such agreement, the 
national Office of the former State shall be cons idered the competent receiving Office for the 
purposes of Article 15 (5). 
 
     (c) In connection with any decision made under Article 9 (2), the Assembly shall appoint the 
national Office or the intergovernmental organization which will act as receiving Office for applications of residents or nationals of States specified by the Assembly. Such appointment shall 
require the previous consent of the said nati onal Office or intergovernmental organization. 
 
19.2   Two or More Applicants 
      If there are two or more applicants:   (i) the requirements of Rule 19.1 shall be c onsidered to be met if the national Office with 
which the international application is file d is the national Office of or acting for a 
Contracting State of which at least one of th e applicants is a resident or a national; 
  (ii) the international application may be  filed with the International Bureau under 
Rule 19.1 ( a) (iii) if at least one of the appli cants is a resident or national of a 
Contracting State. 
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19.3   Publication of Fact of Delegation of Duties of Receiving Office 
      (a) Any agreement referred to in Rule 19.1 ( b) shall be promptly notified to the International 
Bureau by the Contracting State which delegates the duties of the receiving Office to the national 
Office of or acting for another Contracting St ate or an intergovernmental organization. 
 
     (b) The International Bureau shall, promptly up on receipt, publish the notification in the Gazette. 
 
19.4   Transmittal to the International Bureau as Receiving Office 
 
     (a) Where an international application is filed with a national Office which acts as a receiving 
Office under the Treaty but    (i) that national Office is not competent under Rule 19.1 or 19.2 to receive that 
international application, or 
 
 (ii) that international application is not in a language accepted under Rule 12.1 (a) by that 
national Office but is in a language accepte d under that Rule by the International 
Bureau as receiving Office, or 
 
(iii) that national Office and the International Bureau agree, for any reason other than 
those specified under items (i) and (ii), and with the authorization of the applicant, 
that the procedure under this Rule should apply, 
 that international application shall, subject to para graph (b), be considered to have been received by 
that Office on behalf of the International Bur eau as receiving Office under Rule 19.1 (a) (iii). 
 
     (b) Where, pursuant to paragraph ( a), an international application is received by a national Office 
on behalf of the International Bur eau as receiving Office under Rule 19.1 ( a) (iii), that national Office 
shall, unless prescriptions concerning national securi ty prevent the international application from 
being so transmitted, promptly transmit it to th e International Bureau. Such transmittal may be 
subjected by the national Office to the payment of a fee, for its own benefit, equal to the transmittal 
fee charged by that Office under Rule 14. The in ternational application so transmitted shall be 
considered to have been received by the International Bureau as receiving Office under 
Rule 19 (1) ( a) (iii) on the date of receipt of the intern ational application by that national Office. 
      (c) For the purposes of Rules 14.1 (c), 15.4 (a) to (c) and 16.1 (f), where the international 
application was transmitted to the International Bur eau under paragraph (b), the date of receipt of the 
international application shall be considered to be the date on whic h the international application was 
actually received by the International Bureau.  For th e purposes of this paragraph, the last sentence of 
paragraph (b) shall not apply.  
Rule 20 
Receipt of the International Application 
 
20.1   Date and Number 
      (a) Upon receipt of papers purporting to be an inte rnational application, the receiving Office shall 
indelibly mark the date of actual receipt on the re quest of each copy received and the international 
application number on each sheet of each copy received.       (b) The place on each sheet where the date or number shall be marked, and ot her details, shall be 
specified in the Administrative Instructions. 
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20.2   Receipt on Different Days 
      (a) In cases where all the sheets pert aining to the same purported inte rnational application are not 
received on the same day by the receiving Office, that Office shall correct the date marked on the request (still leaving legible, however, the earlier date  or dates already marked) so that it indicates the 
day on which the papers completing the internati onal application were received, provided that 
  (i) where no invitation under Article 11 (2) ( a) to correct was sent to the applicant, the 
said papers are received within 30 days from the date on which sheets were first 
received; 
 
 (ii) where an invitation under Article 11 (2) ( a) to correct was sent to  the applicant, the 
said papers are received within the applicable time limit under Rule 20.6; 
  (iii) in the case of Article 14 (2), the missing drawings are received within 30 days from 
the date on which the incomp lete papers were filed; 
  (iv) the absence or later receipt of any sheet containing the abstract or part thereof shall 
not, in itself, require any correction of the date marked on the request. 
      (b) Any sheet received on a date later than the date  on which sheets were first received shall be 
marked by the receiving Office with the date on which it was received. 
 
20.3   Corrected International Application 
      In the case referred to in Article 11 (2) ( b), the receiving Office shall correct the date marked on 
the request (still leaving legible, however, the earlier date or dates already marked) so that it indicates 
the day on which the last required correction was received. 
 
20.4   Determination under Article 11 (1) 
      (a) Promptly after receipt of the papers purporti ng to be an internati onal application, the 
receiving Office shall determine whether the papers comply with 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 his identity to be est ablished 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 part which appears to be a 
description (other than any sequence listing part ther eof) and the part which appears to be a claim or 
claims be in a language accepted by the receiving Office under Rule 12.1 (a).  
     (d) If, on October 1, 1997, paragraph (c) is not co mpatible with the national law applied by the 
receiving Office, paragraph (c) shall not apply to th at receiving Office for as long as it continues not 
to be compatible with that law, provided that the said Office informs the International Bureau 
accordingly by December 31, 1997.  The informa tion received shall be promptly published by the 
International Bureau in the Gazette.  IP/N/1/AUS/P/6 
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20.5   Positive Determination 
      (a) If the determination under Article 11 (1) is pos itive, the receiving Office shall stamp on the 
request the name of the receiving Office and th e words “PCT International Application,” or 
“Demande internationale PCT.” If the official langua ge of the receiving Office is neither English nor 
French, the words “International Application” or “Demande internationale” may be accompanied by a 
translation of these words in the official language of the receiving Office.       (b) The copy whose request has been so stamped shall be the record copy of the international 
application. 
 
     (c) The receiving Office shall promptly notify th e applicant of the international application 
number and the international filing date. At the same time, it shall send to the International Bureau a 
copy of the notification sent to th e applicant, except where it has al ready sent, or is sending at the 
same time, the record copy to the In ternational Bureau under Rule 22.1 ( a). 
 
20.6   Invitation to Correct 
      (a) The invitation to correct under Article 11 (2) shall specify the requirement provided for under 
Article 11 (1) which, in the opinion of th e receiving Office, has not been fulfilled. 
 
     (b) The receiving Office shall promptly mail the i nvitation to the applicant and shall fix a time 
limit, reasonable under the circumstan ces of the case, for filing the correction. The time limit shall not 
be less than 10 days, and shall not exceed 1 month, fr om the date of the invita tion. If such time limit 
expires after the expiration of 1 year from the filing da te of any application whose priority is claimed, 
the receiving Office may call this circumstan ce to the attention of the applicant. 
 
20.7   Negative Determination 
      If the receiving Office does not, within the prescrib ed time limit, receive a reply to its invitation to 
correct, or if the correction offered by the appli cant still does not fulfil the requirements provided for 
under Article 11 (1), it shall: 
 
 (i) promptly notify the applicant that his 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 pur ported international application and any 
correspondence relating thereto as provided in Rule 93.1, and 
  (iv) send a copy of the said papers to th e International 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. 
 
20.8   Error by the Receiving Office 
 
     If the receiving Office later discovers, or on th e basis of the applicant’s reply realizes, that it has 
erred in issuing an invitation to correct since th e requirements provided for under Article 11 (1) were 
fulfilled when the papers were received, it shall proceed as provided in Rule 20.5. 
 IP/N/1/AUS/P/6 
Page 217 
 
 
20.9   Certified Copy for the Applicant 
      Against payment of a fee, the receiving Office shall furnish to the applicant, on request, certified 
copies of the international application as filed and of any corrections thereto.  
 
Rule 21 
Preparation of Copies 
 
21.1   Responsibility of the Receiving Office 
 
     (a) Where the international application is required to be filed in one copy, the receiving Office 
shall be responsible for preparing the home copy and the search copy required under Article 12 (1). 
      (b) Where the international application is required to be filed in two copies, the receiving Office 
shall be responsible for preparing the home copy. 
 
     (c) If the international application is filed in less than the number of copies required under 
Rule 11.1 ( b), the receiving Office shall be responsible fo r the prompt preparation of the number of 
copies required, and shall have the right to fix a f ee for performing that task and to collect such fee 
from the applicant.  
Rule 22 
Transmittal of the Record Copy and Translation 
 
22.1   Procedure 
 
     (a) If the determination under Article 11 (1) is  positive, and unless prescriptions concerning 
national security prevent the international applica tion from being treated as such, the receiving Office 
shall transmit the record copy to the International Bureau. Such transmittal shall be effected promptly 
after receipt of the internationa l application or, if a check to preserve national security must be 
performed, as soon as the necessary clearance has been obtained. In any case, the receiving Office 
shall transmit the record copy in time for it to reach  the International Bureau by the expiration of the 
13th month from the priority date. If the transmittal is effected by mail, the receiving Office shall mail 
the record copy not later than 5 days prior to the expiration of the 13th month from the priority date.       (b) If the International Bureau has received a copy of the notification under Rule 20.5 ( c) but is 
not, by the expiration of 13 months from the priority  date, in possession of the record copy, it shall 
remind the receiving Office that it should transmit the record copy to the International Bureau 
promptly.       (c) If the International Bureau has received a copy of the notification under Rule 20.5 ( c) but is 
not, by the expiration of 14 months from the priority  date, in possession of the record copy, it shall 
notify the applicant and the receiving Office accordingly. 
 
     (d) After the expiration of 14 months from the priority date, the applicant may request the 
receiving Office to certify a copy of his internat ional application as being identical with the 
international application as filed and may transmit such certified copy to the International Bureau. 
 
     (e) Any certification under paragraph ( d) shall be free of charge and may be refused only on any 
of the following grounds:   (i) the copy which the receiving Office has been  requested to certify is not identical with 
the international application as filed; 
 IP/N/1/AUS/P/6 
Page 218  
 
 (ii) prescriptions concerning national security  prevent the international application from 
being treated as such; 
  (iii) the receiving Office has already transm itted the record copy to the International 
Bureau and that Bureau has informed the receiving Office that it has received the 
record copy. 
      (f) Unless the International Bureau has received th e record copy, or until it receives the record 
copy, the copy certified under paragraph ( e) and received by the International Bureau shall be 
considered to be the record copy. 
 
     (g) If, by the expiration of the time limit applicab le under Article 22, the applicant has performed 
the acts referred to in that Article but the designate d Office has not been inform ed by the International 
Bureau of the receipt of the record copy, the desi gnated Office shall inform the International Bureau. 
If the International Bureau is not in possession of  the record copy, it shall promptly notify the 
applicant and the receiving Office unless it has already notified them under paragraph ( c). 
      (h) Where the international application is to be published in the language of a translation 
furnished under Rule 12.3, that translation sh all be transmitted by the receiving Office to the 
International Bureau together with  the record copy under paragraph (a) or, if the receiving Office has 
already transmitted the record copy to the International Bureau under that paragraph, promptly after 
receipt of the translation. 
 
22.3   Time Limit under Article 12 (3) 
      The time limit referred to in Article 12 (3) sh all be 3 months from the date of the notification sent 
by the International Bureau to the applicant under Rule 22.1 ( c) or ( g). 
 
Rule 23 
Transmittal of the Search Copy , Translation and Sequence Listing 
 
23.1  Procedure 
 
     (a) Where no translation of the international app lication is required under Rule 12.3 (a), the 
search copy shall be transmitted by the receiving Offi ce to the International Searching Authority at the 
latest on the same day as the record copy is tran smitted to the International Bureau unless no search 
fee has been paid.  In the latter case, it shall be transmitted promptly after payment of the search fee. 
 
     (b) Where a translation of the international appli cation is furnished under Rule 12.3, a copy of 
that translation and of the request, which together shall be considered to be the search copy under 
Article 12 (1), shall be transmitted by the receiving Office to the International Searching Authority, 
unless no search fee has been paid.  In the latter case, a copy of the said translation and of the request 
shall be transmitted promptly after payment of the search fee. 
 
     (c) Any sequence listing in computer readable form which is furnished to the receiving Office 
shall be transmitted by that Office to the International Searching Authority.  IP/N/1/AUS/P/6 
Page 219 
 
 
Rule 24 
Receipt of the Record Copy by the International Bureau 
 
24.2   Notification of Receipt of the Record Copy 
 
     (a) The International Bureau shall promptly notify: 
  (i) the applicant,   (ii) the receiving Office, and 
 
(iii) the International Searching Authority ( unless it has informed the  International 
Bureau that it wishes not to be so notified), 
 of the fact and the date of receipt of the record copy. The notification shall identify the international 
application by its number, the international filing date and the name of the applicant, and shall 
indicate the filing date of any earlier application who se priority is claimed. The notification sent to the 
applicant shall also contain a list of the States designated under Rule 4.9 ( a) and, where applicable, of 
those States whose designations have been confirmed under Rule 4.9 ( c). 
      (b) Each designated Office which has informed the International Bureau that it wishes to receive 
the notification under paragraph ( a) prior to the communication under Rule 47.1 shall be so notified 
by the International Bureau:   (i) if the designation concerned was made under Rule 4.9 ( a), promptly after the receipt 
of the record copy; 
 
 (ii) if the designation concerned was made under Rule 4.9 ( b), promptly after the 
International Bureau has been  informed by the receiving Office of the confirmation of 
that designation. 
      (c) If the record copy is received after the expira tion of the time limit fixed in Rule 22.3, the 
International Bureau shall promptly notify the a pplicant, the receiving Office, and the International 
Searching Authority, accordingly.  
Rule 25 
Receipt of the Search Copy by th e International Searching Authority 
 25.1   Notification of Receipt of the Search Copy 
      The International Searching Authority sh all promptly notify the International Bureau, the 
applicant, and—unless the International Searching Authority is the same as the receiving Office—the 
receiving Office, of the fact and the date of receipt of the search copy.  
 
Rule 26 
Checking by, and Correcting before, the Receiving Office of Certain Elements of 
the International Application 
 
26.1   Time Limit for Check 
      (a) The receiving Office shall issue the invitation to correct provided for in Article 14 (1) ( b) as 
soon as possible, preferably within 1 month from the receipt of the international application. 
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Page 220  
 
     (b) If the receiving Office issues an invitation to correct the defect referred to in 
Article 14 (1) ( a) (iii) or (iv) (missing title or missing abstract), it shall notify the International 
Searching Authority accordingly. 
 
26.2   Time Limit for Correction 
 
     The time limit referred to in Article 14 (1) ( b) shall be reasonable under the circumstances and 
shall be fixed in each case by the receiving Office. It  shall not be less than 1 month from the date of 
the invitation to correct. It may be extended by th e receiving Office at any time before a decision is 
taken.  
26.3  Checking of Physical Requirements Under Article 14 (1) (a) (v) 
      (a) Where the international application is filed in a language of publication, the receiving Office 
shall check: 
 
 (i) the international application for complia nce with the physical requirements referred 
to in Rule 11 only to the extent that co mpliance therewith is necessary for the purpose 
of reasonably uniform international publication; 
  (ii) any translation furnished under Rule 12.3 for compliance with the physical 
requirements referred to in Rule 11 to the extent that compliance therewith is 
necessary for the purpose of satisfactory reproduction. 
      (b) Where the international application is file d in a language which is not a language of 
publication, the receiving Office shall check: 
 
 (i) the international application for complia nce with the physical requirements referred 
to in Rule 11 only to the extent that co mpliance therewith is necessary for the purpose 
of satisfactory reproduction; 
  (ii) any translation furnished under Rule 12.3 and the drawings for compliance with the 
physical requirements referred to in Rule 11 to the extent that compliance therewith is 
necessary for the purpose of reasonably uniform international publication. 
 
26.3
bis   Invitation under Article 14 (1) (b) to Correct Defects Under Rule 11 
 
     The receiving Office shall not be required to issue the invitation under Article 14 (1) (b) to correct 
a defect under Rule 11 where the physical requirements referred to in that Rule are complied with to 
the extent required under Rule 26.3. 
 
26.3ter  Invitation to Correct Defects Under Article 3(4)(i) 
 
     (a) Where the abstract or any text matter of the dr awings is filed in a la nguage which is different 
from the language of the description and the claims, the receiving Office shall, unless   (i) a translation of the international app lication is required under Rule 12.3 (a), or 
 
(ii) the abstract or the text matter of the dr awings is in the language in which the 
international application is to be published, 
 IP/N/1/AUS/P/6 
Page 221 
 
 
invite the applicant to furnish a translation of the ab stract or the text matter of the drawings into the 
language in which the international application is to be published.  Rules 26.1 (a), 26.2, 26.3, 26.3bis, 
26.5 and 29.1 shall apply mutatis mutandis . 
 
     (b) If, on October 1, 1997, paragraph (a) is not co mpatible with the national law applied by the 
receiving Office, paragraph (a) shall not apply to th at receiving Office for as long as it continues not 
to be compatible with that law, provided that the said Office informs the International Bureau 
accordingly by December 31, 1997.  The informa tion received shall be promptly published by the 
International Bureau in the Gazette. 
 
     (c) Where the request does not comply with Rule  12.1(c), the receiving Office shall invite the 
applicant to file a translation so as to comply with  that Rule.  Rules 3, 26.1 (a), 26.2, 26.5 and 29.1 
shall apply mutatis mutandis . 
      (d) If, on October 1, 1997, paragraph (c) is not co mpatible with the national law applied by the 
receiving Office, paragraph (c) shall not apply to th at receiving Office for as long as it continues not 
to be compatible with that law, provided that the said Office informs the International Bureau 
accordingly by December 31, 1997.  The informa tion received shall be promptly published by the 
International Bureau in the Gazette. 
 
26.4   Procedure 
      Any correction offered to the receiving Office ma y be stated in a letter addressed to that Office if 
the correction is of such a nature that it can be transferred from the letter to the record copy without 
adversely affecting the clarity and the direct repr oducibility of the sheet on to which the correction is 
to be transferred; otherwise, the applicant sha ll be required to submit a replacement sheet embodying 
the correction and the letter accompanying the re placement sheet shall draw attention to the 
differences between the replaced sh eet and the replacement sheet. 
 
26.5   Decision of the Receiving Office 
 
     The receiving Office shall decide whether th e applicant has submitted the correction within the 
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 withdrawn, provided that no 
international application shall be  considered withdrawn for lack of compliance with the physical 
requirements referred to in Rule 11 if it complies with those requirements to the extent necessary for 
the purpose of reasonably uniform international publication. 
 
26.6   Missing Drawings 
      (a) If, as provided in Article 14 (2), the internationa l application refers to drawings which in fact 
are not included in that application, the receivi ng Office shall so indicate in the said application. 
 
     (b) The date on which the applicant receives the no tification provided for in Article 14 (2) shall 
have no effect on the time limit fixed under Rule 20.2 ( a) (iii). 
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Rule 26
bis. 
Correction or Addition of Priority Claim 
 
26bis.1  Correction or Addition of Priority Claim 
 
     (a) The applicant may correct or add a priority  claim by a notice submitted to the receiving 
Office or the International Bureau within a time li mit of 16 months from the priority date or, where 
the correction or addition would cause a change in th e priority date, 16 months from the priority date 
as so changed, whichever 16-month period expires fi rst, provided that such a notice may be submitted 
until the expiration of four months from the interna tional filing date.  The correction of a priority 
claim may include the addition of any indication referred to in Rule 4.10.       (b) Any notice referred to in paragraph (a) receive d by the receiving Office or the International 
Bureau after the applicant has made a request for early publication under Article 21 (2) (b) shall be 
considered not to have been submitted, unless th at request is withdrawn before the technical 
preparations for international pub lication have been completed. 
      (c) Where the correction or addition of a priority claim causes a change in the priority date, any 
time limit which is computed from the previously ap plicable priority date and which has not already 
expired shall be computed from the priority date as so changed.  
26
bis.2  Invitation to Correct Defects in Priority Claims 
      (a) Where the receiving Office or, if the receiving O ffice fails to do so, the International Bureau, 
finds that a priority claim does not comply with the requirements of Rule 4.10 or that any indication in 
a priority claim is not the same as the corresponding indication appearing in the priority document, the receiving Office or the International Bureau, as the c ase may be, shall invite the applicant to correct 
the priority claim.       (b) If, in response to an invitation under paragr aph (a), the applicant does not, before the 
expiration of the time limit under Rule 26
bis.1 (a), submit a notice correcting the priority claim so as 
to comply with the requirements of Rule 4.10, th at priority claim shall, for the purposes of the 
procedure under the Treaty, be considered not to ha ve been made and the receiving Office or the 
International Bureau, as the case may be, shall so de clare and shall inform the applicant accordingly, 
provided that a priority claim shall not be cons idered not to have been made only because the 
indication of the number of the earlier application referred to in Rule 4.10 (a) (ii) is missing or 
because an indication in the priority claim is not  the same as the corresponding indication appearing 
in the priority document.       (c) Where the receiving Office or the International Bureau has made a declaration under 
paragraph (b), the International Bureau shall, up on request made by the applicant and received by the 
International Bureau prior to the completion of the technical preparations for international publication, 
and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish, together with the internationa l application, information concerning the priority 
claim which was considered not to have been made.  A copy of that request shall be included in the 
communication under Article 20 where a copy of the pamphlet is not used for that communication or 
where the international application is not published by virtue of Article 64 (3). 
 IP/N/1/AUS/P/6 
Page 223 
 
 
Rule 27 
Lack of Payment of Fees 
 
27.1   Fees 
 
     (a) For the purposes of Article 14 (3) ( a), “fees prescribed under Article 3 (4) (iv)” means: the 
transmittal fee (Rule 14), the basic fee part of th e international fee (Rule 15.1 (i)), the search fee 
(Rule 16), and, where required, the late payment fee (Rule 16bis.2). 
 
     (b) For the purposes of Article 14 (3) ( a) and ( b), “the fee prescribed under Article 4 (2)” means 
the designation fee part of the international fee (Rul e 15.1 (ii)) and, where required, the late payment 
fee (Rule 16bis.2). 
 
Rule 28 
Defects Noted by the International Bureau 
 
28.1   Note on Certain Defects 
       (a) If, in the opinion of the International Bureau, th e international application contains any of the 
defects referred to in Article 14 (1) ( a) (i), (ii), or (v), the Internati onal Bureau shall bring such defects 
to the attention of the receiving Office. 
      (b) The receiving Office shall, unless it disagrees  with the said opinion, proceed as provided in 
Article 14 (1) ( b) and Rule 26.  
 
Rule 29 
International Applications or Designations Considered Withdrawn 
 
29.1   Finding by Receiving Office 
 
     (a) If the receiving Office declares, under Article 14 (1) ( b) and Rule 26.5 (failure to correct 
certain defects), or under Article 14 (3) ( a) (failure to pay the prescribed fees under Rule 27.1 ( a)), or 
under Article 14 (4) (later finding of non-compliance with the requirements listed in items (i) to (iii) 
of Article 11 (1)), or under Rule 12.3 (d) (failure to furnish a require d translation or, where applicable, 
to pay a late furnishing fee), or under Rule 92.4 (g) (i ) (failure to furnish the original of a document), 
that the international applica tion is considered withdrawn: 
 
 (i) the receiving Office shall transmit the record copy (unless already transmitted), and 
any correction offered by the appli cant, to the International Bureau; 
  (ii) the receiving Office shall promptly no tify both the applicant and the International 
Bureau of the said declaration, and the Inte rnational Bureau shall in turn notify each 
designated Office which has already been notified of its designation; 
  (iii) the receiving Office shall not transmit the search copy as provided in Rule 23, or, if 
such copy has already been transmitted, it shall notify the International Searching 
Authority of the said declaration; 
 
 (iv) the International Bureau shall not be re quired to notify the applicant of the receipt of 
the record copy. 
      (b) If the receiving Office declares under Article 14 (3) ( b) (failure to pay the prescribed 
designation fee under Rule 27.1 ( b)) that the designation of any given State is considered withdrawn, IP/N/1/AUS/P/6 
Page 224  
 
the receiving Office shall promptly notify both the app licant and the International Bureau of the said 
declaration. The International Bureau shall in turn notify each designated Office which has already 
been notified of its designation. 
 
29.3   Calling Certain Facts to the Attention of the Receiving Office 
 
     If the International Bureau or the Interna tional Searching Authority considers that the receiving 
Office should make a finding under Article 14 (4), it sha ll call the relevant facts to the attention of the 
receiving Office. 
 
29.4   Notification of Intent to Make Declaration under Article 14 (4) 
      Before the receiving Office issues any declar ation under Article 14 (4), it shall notify the applicant 
of its intent to issue such declaration and the reas ons therefor. The applicant may, if he disagrees with 
the tentative finding of the receiving Office, submit arguments to that effect within 1 month from the 
notification. 
 
Rule 30 
Time Limit under Article 14 (4) 
 
30.1   Time Limit 
 
     The time limit referred to in Article 14 (4) shall be 4 months from the international filing date. 
 
Rule 31 
Copies Required under Article 13 
 31.1   Request for Copies 
      (a) Requests under Article 13 (1) may relate to all,  some kinds of, or individual international 
applications in which the national Office making the request is designated. Requests for all or some 
kinds of such international applications must be renewed for each year by means of a notification 
addressed by that Office before November 30 of the preceding year to the International Bureau. 
      (b) Requests under Article 13 (2) ( b) shall be subject to the payment of a fee covering the cost of 
preparing and mailing the copy. 
 
31.2   Preparation of Copies 
      The preparation of copies required under Article  13 shall be the responsibility of the International 
Bureau.  
Rule 32 
Extension of Effects of International Application to Certain Successor States 
 
32.1   Request for Extension of International Application to Successor State 
      (a) The effects of any international application w hose international filing date falls in the period 
defined in paragraph ( b) may, subject to the performance by th e applicant of the acts specified in 
paragraph ( c), be extended to a State (“the successor State”) whose territory was, before the 
independence of that State, part of the territory of a Contracting State which subsequently ceased to 
exist (“the predecessor State”), provided that th e successor State has become a Contracting State 
through the deposit, with the Director General, of a declaration of continuation the effect of which is 
that the Treaty is applied by the successor State. IP/N/1/AUS/P/6 
Page 225 
 
 
       (b) The period referred to in paragraph ( a) starts on the day following the last day of the existence 
of the predecessor State and ends two months after th e date on which the declaration referred to in 
paragraph ( a) was notified by the Director General to the Governments of the States party to the Paris 
Convention for the Protection of Industrial Property.  However, where the date of independence of the 
successor State is earlier than the date of the da y following the last day of the existence of the 
predecessor State, the successor Stat e may declare that the said period starts on the date of its 
independence; such a declaration shall be made together with the declaration referred to in 
paragraph ( a) and shall specify the date of independence. 
 
     (c) In respect of any international application who se filing date falls within the applicable period 
under paragraph ( b), the International Bureau shall send th e applicant a notification informing him 
that he may make a request for extension by perform ing, within three months from the date of that 
notification, the following acts:  
 (i) filing with the International Bureau the request for extension; 
  (ii) paying to the International Bureau an extension fee in Swiss francs, the amount of 
which shall be the same as the amount of the designation fee referred to in Rule 15.2 ( a). 
 
     (d) This Rule shall not apply to the Russian Federation. 
 
32.2   Effects of Extension to Successor State 
      (a) Where a request for extension is made in accordance with Rule 32.1, 
 
 (i) the successor State shall be considered as having been designated in the international 
application, and 
  (ii) the applicable time limit under Article 22 or 39 (1) in relation to that State shall be 
extended until the expiration of at least three months from the date of the request for 
extension. 
      (b) Where, in the case of a successor State which is bound by Chapter II of the Treaty, the request 
for extension was made after, but the demand was made before, the expiration of the 19th month from 
the priority date, and a later election is made of the successor State within three months from the date 
of the request for extension, the a pplicable time limit under paragraph ( a) (ii) shall be at least 30 
months from the priority date.       (c) The successor State may fix time limits which expire later than those provided in 
paragraphs ( a) (ii) and ( b). The International Bureau shall pub lish information on such time limits in 
the Gazette. 
 IP/N/1/AUS/P/6 
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Rule 33 
Relevant Prior Art for the International Search 
 
33.1   Relevant Prior Art for the International Search 
 
     (a) For the purposes of Article 15 (2), relevant pr ior art shall consist of everything which has 
been made available to the public anywhere in th e world by means of written disclosure (including 
drawings and other illustrations) and which is capable  of being of assistance in determining that the 
claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is 
or is not obvious), provided that the making availa ble to the public occurred prior to the international 
filing date. 
      (b) When any written disclosure refers to an oral  disclosure, use, exhibition, or other means 
whereby the contents of the written disclosure were  made available to the public, and such making 
available to the public occurred on a date prior to th e international filing date, the international search 
report shall separately mention that fact and the da te on which it occurred if the making available to 
the public of the written disclosure occurred on a da te which is the same as, or later than, the 
international filing date.       (c) Any published application or any patent whose publ ication date is the same as, or later than, 
but whose filing date, or, where applicable, claimed pr iority date, is earlier than the international filing 
date of the international application searched, and which would constitute relevant prior art for the 
purposes of Article 15 (2) had it been published prior to  the international filing date, shall be specially 
mentioned in the international search report. 
 
33.2   Fields to be Covered by the International Search 
 
     (a) The international search shall cover all those t echnical fields, and shall be carried out on the 
basis of all those search files, which may contain material pertinent to the invention.       (b) Consequently, not only shall the art in which th e invention is classifiable be searched but also 
analogous arts regardless of where classified. 
 
     (c) The question what arts are, in any given case, to be regarded as analogous shall be considered 
in the light of what appears to be the necessary essential function or use of the invention and not only 
the specific functions expressly indicated  in the international application. 
 
     (d) The international search shall embrace all s ubject matter that is generally recognized as 
equivalent to the subject matter of the claimed inven tion for all or certain of its features, even though, 
in its specifics, the invention as described in  the international application is different. 
 
33.3   Orientation of the International Search 
 
     (a) International search shall be made on the b asis of the claims, with due regard to the 
description and the drawings (if any) and with pa rticular emphasis on the inventive concept towards 
which the claims are directed.       (b) In so far as possible and reasonable, the inte rnational search shall cover the entire subject 
matter to which the claims are directed or to which they might reasonably be expected to be directed 
after they have been amended.  IP/N/1/AUS/P/6 
Page 227 
 
 
Rule 34 
Minimum Documentation 
 
34.1   Definition 
 
     (a) The definitions contained in Article 2 (i) and ( ii) shall not apply for the purposes of this Rule. 
      (b) The documentation referred to in Article 15 (4 ) (“minimum documentation”) shall consist of: 
  (i) the “national patent documen ts” as specified in paragraph ( c), 
 
 (ii) the published international (PCT) applica tions, the published regional applications for 
patents and inventors’ certificates, and th e published regional patents and inventors’ 
certificates, 
 
 (iii) such other published items of non-patent  literature as the International Searching 
Authorities shall agree upon and which shall be  published in a list by the International 
Bureau when agreed upon for the fi rst time and whenever changed. 
      (c) Subject to paragraphs ( d) and ( e), the “national patent documents” shall be the following: 
 
 (i) the patents issued in and after 1920 by France, the former Reichspatentamt  of 
Germany, Japan, the former Soviet Union, Switzerland (in the French and German languages only), the United Kingdom, and the United States of America, 
  (ii) the patents issued by the Federal Re public of Germany and the Russian Federation, 
 
 (iii) the patent applications, if any, publis hed in and after 1920 in the countries referred to 
in items (i) and (ii), 
  (iv) the inventors’ certificates issued by the former Soviet Union,  
 (v) the utility certificates issued by, and the published applications for utility certificates 
of, France, 
  (vi) such patents issued by, and such pate nt applications published in, any other country 
after 1920 as are in the English, French, Ge rman or Spanish language and in which no 
priority is claimed, provided that the nati onal Office of the interested country sorts 
out these documents and places them at the disposal of each International Searching 
Authority. 
      (d) Where an application is republished once (for example, an Offenlegungschrift  as an 
Auslegeschrift ) or more than once, no International Searching Authority shall be obliged to keep all 
versions in its documentation; consequently, each su ch Authority shall be entitled not to keep more 
than one version. Furthermore, where an application is  granted and is issued in the form of a patent or 
a utility certificate (France), no International Search ing Authority shall be obliged to keep both the 
application and the patent or utility certificate (Fran ce) in its documentation; consequently, each such 
Authority shall be entitled to keep either the a pplication only or the patent or utility certificate 
(France) only. 
      (e) Any International Searching Authority whose official language, or one of whose official 
languages, is not Japanese, Russian or Spanish is entitled not to include in its documentation those 
patent documents of Japan, the Russian Federati on and the former Soviet Union as well as those 
patent documents in the Spanis h language, respectively, for which no abstracts in the English IP/N/1/AUS/P/6 
Page 228  
 
language are generally available.  English abstract s becoming generally available after the date of 
entry into force of these Regulations shall require the inclusion of the patent documents to which the 
abstracts refer no later than six months after such ab stracts become generally available.  In case of the 
interruption of abstracting services in English in technical fields in which English abstracts were 
formerly generally available, the Assembly shall ta ke appropriate measures to  provide for the prompt 
restoration of such services in the said fields. 
      (f) For the purposes of this Rule, applications  which have only been laid open for public 
inspection are not considered published applications.  
 
Rule 35 
The Competent International Searching Authority 
 
35.1   When Only One International Searching Authority is Competent 
 
     Each receiving Office shall, in accordance with th e terms of the applicable agreement referred to in 
Article 16 (3) ( b), inform the International Bureau whic h International Searching Authority is 
competent for the searching of the international appli cations filed with it, and the International Bureau 
shall promptly publish such information. 
 
35.2   When Several International Se arching Authorities are Competent 
 
     (a) Any receiving Office may, in accordance with the terms of the applicable agreement referred 
to in Article 16 (3) ( b), specify several International Searching Authorities: 
  (i) by declaring all of them competent for a ny international applica tion filed with it, and 
leaving the choice to the applicant, or 
  (ii) by declaring one or more competent fo r certain kinds of international applications 
filed with it, and declaring one or more  others competent for other kinds of 
international applications filed with it, pr ovided that, for those kinds of international 
applications for which several Internationa l Searching Authorities are declared to be 
competent, the choice shall be left to the applicant. 
      (b) Any receiving Office availing itself of the faculty provided in paragraph ( a) shall promptly 
inform the International Bureau, and the Intern ational Bureau shall promptly publish such 
information.  
35.3   When the International Bureau Is Receiving Office Under Rule 19.1 (a) (iii) 
      (a) Where the international application is filed w ith the International Bureau as receiving Office 
under Rule 19.1 ( a) (iii), an International Searching Authorit y shall be competent for the searching of 
that international application if it would have been  competent had that international application been 
filed with a receiving Office competent under Rule 19.1 ( a) (i) or (ii), ( b) or ( c) or Rule 19.2 (i). 
      (b) Where two or more International Searching Authorities are competent under paragraph ( a), 
the choice shall be left to the applicant.  
     (c) Rules 35.1 and 35.2 shall not apply to the International Bureau as receiving Office under 
Rule 19.1 ( a) (iii). 
 
Rule 36 
Minimum Requirements for International Searching Authorities 
 IP/N/1/AUS/P/6 
Page 229 
 
 
36.1   Definition of Minimum Requirements 
      The minimum requirements referred to in Article 16 (3) ( c) shall be the following: 
  (i) the national Office or intergovernmental organization must have at least 100 full-time 
employees with sufficient technical qualifications to carry out searches; 
  (ii) that Office or organization must have in its possession, or have access to, at least the 
minimum documentation referred to in Rule 34, properly arranged for search 
purposes, on paper, in microform or stored on electronic media; 
 
 (iii) that Office or organization must have a staff which is capable of searching the 
required technical fields and which has th e language facilities to understand at least 
those languages in which the minimum doc umentation referred to in Rule 34 is 
written or is translated.  
 
Rule 37 
Missing or Defective Title 
 
37.1   Lack of Title 
 
     If the international application does not c ontain a title and the receiving Office has notified the 
International Searching Authority that it has inv ited the applicant to correct such defect, the 
International Searching Authority shall proceed with the international search unless and until it 
receives notification that the said app lication is considered withdrawn. 
 
37.2   Establishment of Title  
      If the international application does not cont ain a title and the International Searching Authority 
has not received a notification from the receiving O ffice to the effect that the applicant has been 
invited to furnish a title, or if the said Authority find s that the title does not comply with Rule 4.3, it 
shall itself establish a title.  Such title shall be est ablished in the language in which the international 
application is to be published or, if a transl ation into another langua ge was transmitted under 
Rule 23.1 (b) and the International Searching Authorit y so wishes, in the language of that translation. 
 
Rule 38 
Missing or Defective Abstract 
 38.1   Lack of Abstract 
      If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has in vited the applicant to correct such defect, the 
International Searching Authority shall proceed with the international search unless and until it 
receives notification that the said app lication is considered withdrawn. 
 
38.2   Establishment of Abstract 
      (a) If the international application does not contai n an abstract and the International Searching 
Authority has not received a notification from the receiv ing Office to the effect that the applicant has 
been invited to furnish an abstract, or if the said Au thority finds that the abstract does not comply with 
Rule 8, it shall itself establish an abstract.  Such ab stract shall be establishe d in the language 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 Internationa l Searching Authority so wishes, in the language 
of that translation. IP/N/1/AUS/P/6 
Page 230  
 
      (b) The applicant may, within one month from th e date of mailing of the international search 
report, submit comments on the abstract establishe d by the International Searching Authority. Where 
that Authority amends the abstract established by it, it shall notify the amendment to the International 
Bureau. 
 
Rule 39 
Subject Matter under Article 17 (2) (a) (i) 
 
39.1   Definition 
 
     No International Searching Authority shall be required to search an international application if, and 
to the extent to which, its subject matter is any of the following:   (i) scientific and mathematical theories, 
 
 (ii) plant or animal varieties or essentially biological processes for the production of 
plants and animals, other than microbiol ogical processes and the products of such 
processes, 
  (iii) schemes, rules or methods of doing business, performing purely mental acts or 
playing games, 
  (iv) methods for treatment of the human or animal body by surgery or therapy, as well as 
diagnostic methods, 
 
 (v) mere presentations of information, 
  (vi) computer programs to the extent that the International Searching Authority is not 
equipped to search prior art concerning such programs. 
 
Rule 40 
Lack of Unity of Invention (International Search) 
 
40.1   Invitation to Pay 
      The invitation to pay additiona l fees provided for in Article 17 (3) ( a) shall specify the reasons for 
which the international application is not consider ed as complying with the requirement of unity of 
invention and shall indicate the amount to be paid. 
 
40.2   Additional Fees 
      (a) The amount of the additional fee due for searching under Article 17 (3) ( a) shall be 
determined by the competent International Searching Authority. 
      (b) The additional fee due for searching under Article 17 (3) ( a) shall be payable direct to the 
International Searching Authority.  
     (c) Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned 
statement to the effect that the international app lication complies with the requirement of unity of 
invention or that the amount of the required add itional fee is excessive. Such protest shall be 
examined by a three-member board or other special  instance of the International Searching Authority 
or any competent higher authority, which, to the extent  that it finds the protest justified, shall order the 
total or partial reimbursement to the applicant of th e additional fee. On the request of the applicant, IP/N/1/AUS/P/6 
Page 231 
 
 
the text of both the protest and the decision thereon shall be notified to the designated Offices together 
with the international search report. The applican t shall submit any translation thereof with the 
furnishing of the translation of the intern ational application requi red under Article 22. 
      (d) The three-member board, special instance or competent higher authority, referred to in 
paragraph ( c), shall not comprise any person who made the decision which is the subject of the 
protest.       (e) Where the applicant has, under paragraph ( c), paid an additional fee under protest, the 
International Searching Authority may, after a prior re view of the justification for the invitation to pay 
an additional fee, require that the applicant pay a f ee for the examination of the protest (“protest fee”). 
The protest fee shall be paid within one month from th e date of the notification to the applicant of the 
result of the review. If the protest fee is not so pa id, the protest shall be considered withdrawn. The 
protest fee shall be refunded to the applicant where the three-member board, special instance or higher 
authority referred to in paragraph ( c) finds that the protest was entirely justified. 
 
40.3   Time Limit 
      The time limit provided for in Article 17 (3) ( a) shall be fixed, in each  case, according to the 
circumstances of the case, by the International S earching Authority; it shall not be shorter than 15 
or 30 days, respectively, depending on whether the applicant’s address is in the same country as or in 
a different country from that in which the Internati onal Searching Authority is located, and it shall not 
be longer than 45 days, from the date of the invitation.  
Rule 41 
Earlier Search Other Than International Search 
 41.1   Obligation to Use Results; Refund of Fee 
      If reference has been made in the request , in the form provided for in Rule 4.11, to an 
international-type search carried out under the conditi ons set out in Article 15 (5) or to a search other 
than an international or international-type search, the International Searching Authority shall, to the 
extent possible, use the results of the said search in establishing th e international search report on the 
international application. The International Search ing Authority shall refund the search fee, to the 
extent and under the conditions provided fo r in the agreement under Article 16 (3) ( b) or in a 
communication addressed to and published in the Gazette by the International Bureau, if the international search report could wholly or part ly be based on the results of the said search.  
 
Rule 42 
Time Limit for International Search 
 
42.1   Time Limit for International Search 
 
     The time limit for establishing the internati onal search report or the declaration referred to in 
Article 17 (2) ( a) shall be 3 months from the receipt of the search copy by the International Searching 
Authority, or 9 months from the priority  date, whichever time limit expires later.  
 
Rule 43 
The International Search Report 
 
43.1   Identifications 
 IP/N/1/AUS/P/6 
Page 232  
 
     The international search report shall iden tify the International Searching Authority which 
established it by indicating the name of such Authorit y, and the international application by indicating 
the international application number, the name of the applicant, and the international filing date. 
 
43.2   Dates 
 
     The international search report shall be dated and shall indicate the date on which the international 
search was actually completed. It shall also indi cate the filing date of any earlier application whose 
priority is claimed or, if the priority of more than  one earlier application is claimed, the filing date of 
the earliest among them.  
43.3   Classification 
      (a) The international search report shall contain th e classification of the subject matter at least 
according to the International Patent Classification. 
 
     (b) Such classification shall be effected by  the International Searching Authority. 
 
43.4   Language 
      Every international search report and any decl aration made under Article 17 (2) (a) shall be in the 
language in which the international a pplication to which it relates is to  be published or, if a translation 
into another language was transmitte d under Rule 23.1 (b) and the International Searching Authority 
so wishes, in the language of that translation. 
 
43.5   Citations 
 
     (a) The international search report shall contain the citations of the documents considered to be 
relevant.       (b) The method of identifying any cited document shall be regulated by the Administrative 
Instructions. 
 
     (c) Citations of particular releva nce shall be specially indicated. 
      (d) Citations which are not relevant to all the clai ms shall be cited in relation to the claim or 
claims to which they are relevant. 
 
     (e) If only certain passages of the cited document are re levant or particularly relevant, they shall 
be identified, for example, by indicating the page, the column, or the lines, where the passage appears. 
If the entire document is relevant but some passages ar e of particular relevance, such passages shall be 
identified unless such identification is not practicable. 
 
43.6   Fields Searched 
      (a) The international search report shall list the cl assification identification of the fields searched. 
If that identification is effected on the basis of a classification other than the International Patent 
Classification, the International Searching Au thority shall publish the classification used. 
 
     (b) If the international search extended to patent s, inventors’ certificates, utility certificates, 
utility models, patents or certificates of addition, inventors’ certificates of addition, utility certificates 
of addition, or published applications for any of those kinds of protection, of States, periods, or 
languages, not included in the minimum documentation as defined in Rule 34, the international search IP/N/1/AUS/P/6 
Page 233 
 
 
report shall, when practicable, identify the kinds  of documents, the States, the periods, and the 
languages to which it extended. For the purposes of th is paragraph, Article 2 (ii) shall not apply. 
      (c) If the international search was based on, or was extended to, any electronic data base, the 
international search report may indicate the name of the data base and, where considered useful to 
others and practicable, the search terms used. 
 
43.7   Remarks Concerning Unity of Invention 
      If the applicant paid additional fees for the in ternational search, the international search report shall 
so indicate. Furthermore, where the international search was made on the main invention only or on 
less than all the inventions (Article 17 (3) ( a)), the international search report shall indicate what parts 
of the international application were and what parts were not searched. 
 
43.8   Authorized Officer 
 
     The international search report shall indicate th e name of the officer of the International Searching 
Authority responsible for that report. 
 
43.9   Additional Matter 
 
     The international search report shall contain no matter other than that specified in Rules 33.1 (b) 
and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2, a nd the indication referred to in Article 17(2) (b), 
provided that the Administrative Instructions may permit the inclusion in the international search 
report of any additional matter specified in the Admi nistrative Instructions.  The international search 
report shall not contain, and the Administrative Inst ructions shall not permit the inclusion of, any 
expressions of opinion, reasoning,  arguments, or explanations. 
 
43.10    Form 
      The physical requirements as to form of the international search report shall be prescribed by the 
Administrative Instructions. 
 
Rule 44 
Transmittal of the International Search Report, Etc. 
 
44.1   Copies of Report or Declaration 
 
     The International Searching Authority shall, on  the same day, transmit the copy of the international 
search report or the declaration referred to in Article 17 (2) ( a) to the International Bureau and one 
copy to the applicant. 
 
44.2   Title or Abstract 
 
     The international search report shall either  state that the International Searching Authority 
approves the title and the abstract as submitted by the applicant or be accompanied by the text of the 
title and/or abstract as established by the Intern ational Searching Authority under Rules 37 and 38. 
 
44.3   Copies of Cited Documents 
      (a) The request referred to in Article 20 (3) ma y be presented any time during 7 years from the 
international filing date of the inte rnational application to which the international search report relates. 
 IP/N/1/AUS/P/6 
Page 234  
 
     (b) The International Searching Authority may re quire that the party (applicant or designated 
Office) presenting the request pay to it the cost of  preparing and mailing the copies. The level of the 
cost of preparing copies shall be provided for in  the agreements referred to in Article 16 (3) ( b) 
between the International Searching Au thorities and the International Bureau. 
 
     (d) Any International Searching Authority ma y perform the obligations referred to in 
paragraphs ( a) and ( b) through another agency responsible to it. 
 
Rule 45 
Translation of the International Search Report 
 45.1   Languages 
      International search reports and de clarations referred to in Article 17 (2) ( a) shall, when not in 
English, be translated into English. 
 
Rule 46 
Amendment of Claims before the International Bureau 
 
46.1   Time Limit 
 
     The time limit referred to in Article 19 sha ll be 2 months from the date of transmittal of the 
international search report to the International Bu reau and to the applicant by the International 
Searching Authority or 16 months from the priority date, whichever time limit expires later, provided 
that any amendment made under Article 19 which is  received by the International Bureau after the 
expiration of the applicable time limit shall be cons idered to have been received by that Bureau on the 
last day of that time limit if it reaches it before th e technical preparations for international publication 
have been completed. 
 
46.2   Where to File 
      Amendments made under Ar ticle 19 shall be filed directly with the International Bureau. 
 
46.3   Language of Amendments 
      If the international application has been file d in a language other than the language in which it is 
published, any amendment made under Article 19 shall be in the language of publication. 
 
46.4   Statement 
      (a) The statement referred to in Article 19 (1) sha ll be in the language in which the international 
application is published and shall not exceed 500 words if  in the English language or if translated into 
that language. The statement shall be identified as su ch by a heading, preferably by using the words 
“Statement under Article 19 (1)” or their equi valent in the language of the statement. 
      (b) The statement shall contain no disparaging comments on the international search report or the 
relevance of citations contained in that report. Re ference to citations, relevant to a given claim, 
contained in the international search report may be  made only in connection with an amendment of 
that claim. 
 
46.5   Form of Amendments 
      The applicant shall be required to submit a re placement sheet for every sheet of the claims which, 
on account of an amendment or amendments under Artic le 19, differs from the sheet originally filed. IP/N/1/AUS/P/6 
Page 235 
 
 
The letter accompanying the replace ment sheets shall draw attention to the differences between the 
replaced sheets and the replacement sheets. To the extent that any amendment results in the 
cancellation of an entire sheet, that amendm ent shall be communicated in a letter. 
 
Rule 47 
Communication to Designated Offices 
 
47.1   Procedure 
      (a) The communication provided for in Article 20 sh all be effected by the International Bureau. 
 
     (a
bis) The International Bureau shall notify each designated Office, at the time of the 
communication provided for in Article 20, of the fact a nd date of receipt of the record copy and of the 
fact and date of receipt of any priority docume nt. Such notification shall also be sent to any 
designated Office which has waived the communicati on provided for in Article 20, unless such Office 
has also waived the notification of its designation. 
      (b) Such communication shall be effected promptly after the international publication of the 
international application and, in any event, by the end of the 19th month after the priority date. Any 
amendment received by the International Bureau w ithin the time limit under Rule 46.1 which was not 
included in the communication shall be communicat ed promptly to the designated Offices by the 
International Bureau, and the latter sh all notify the applicant accordingly. 
      (c) The International Bureau shall send a notice to  the applicant indicating the designated Offices 
to which the communication has been effected and th e date of such communication. Such notice shall 
be sent on the same day as the communication. Each  designated Office shall be informed, separately 
from the communication, about the sending and the date of mailing of the notice. The notice shall be 
accepted by all designated Offices as conclusive ev idence that the communication has duly taken 
place on the date specified in the notice.       (d) Each designated Office shall, when it so requir es, receive the international search reports and 
the declarations referred to in Article 17 (2) ( a) also in the translation referred to in Rule 45.1. 
      (e) Where any designated Office has waived th e requirement provided under Article 20, the 
copies of the documents which otherwise would have been  sent to that Office shall, at the request of 
that Office or the applicant, be sent to the a pplicant at the time of th e notice referred to in 
paragraph ( c). 
 47.2   Copies 
      (a) The copies required for communication shall be  prepared by the International Bureau. 
 
     (b) They shall be on sheets of A4 size. 
      (c) Except to the extent that any designated Offi ce notifies the International Bureau otherwise, 
copies of the pamphlet under Rule 48 may be u sed for the purposes of the communication of the 
international application under Article 20.  
47.3   Languages  
      (a) The international application communicated under Article 20 shall be  in the language in 
which it is published.  IP/N/1/AUS/P/6 
Page 236  
 
     (b) Where the language in which the international application is published is different from the 
language in which it was filed, the International Bu reau shall furnish to any designated Office, upon 
the request of that Office, a copy of that a pplication in the language in which it was filed. 
 
47.4   Express Request under Article 23 (2) 
 
     Where the applicant makes an express request  to a designated Office under Article 23 (2) before 
the communication provided for in Article 20 has take n place, the International Bureau shall, upon 
request of the applicant or the designated Office, promptly effect that communication to that Office 
 
Rule 48 
International Publication 
 
48.1   Form 
 
     (a) The international application shall be  published in the form of a pamphlet. 
      (b) The particulars regarding the form of the pa mphlet and the method of reproduction shall be 
governed by the Administrative Instructions. 
 
48.2   Contents 
 
     (a) The pamphlet 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); the publication of the internati onal search report in the pamphlet 
shall, however, not be required to include the part of the international search report 
which contains only matter referred to in Rule 43 already appearing on the front page 
of the pamphlet, 
 
 (vi) any statement filed under Article 19 (1), unless the International Bureau finds that the 
statement does not comply with the provisions of Rule 46.4, 
  (vii) any request for rectification referre d to in the third sentence of Rule 91.1 ( f), 
 
 (viii) the relevant data from any 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 Intern ational Bureau received such indications, 
  (ix) any information concerning a priority claim considered not to have been made under 
Rule 26
bis.2 (b), the publication of which is requested under Rule 26bis.2 (c). 
      (b) Subject to paragraph ( c), the front page shall include: 
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 (i) data taken from the request sheet a nd such other data as are prescribed by the 
administrative Instructions, 
  (ii) a figure or figures where the interna tional application contains drawings, unless 
Rule 8.2 ( b) applies, 
 
 (iii) the abstract; if the abstract is both in English and in another la nguage, the English text 
shall appear first. 
      (c) Where a declaration under Article 17 (2) (i) h as 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 the 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 transl ation is required to be published under Rule 48.3 ( c). 
      (f) If the claims have been amended under Article 19,  the publication shall contain either the full 
text of the claims both as filed and as amended or the full text of the claims as filed and specify the 
amendments. Any statement referred to in Article  19 (1) shall be included as well, unless the 
International Bureau finds that the statement does not comply with the provisions of Rule 46.4. The date of receipt of the amended claims by the International Bureau shall be indicated.       (g) If, at the time of the completion of the technical preparations for international publication, the 
international search report is not yet available (for example, because of publication on the request of 
the applicant as provided in Articles 21 (2) ( b) and 64 (3) ( c) (i)), the pamphlet shall contain, in place 
of the international search report, an indication to th e effect that that report was not available and that 
either the pamphlet (then also including the inte rnational search report) w ill be republished or the 
international search report (when it becomes available) will be separately published. 
 
     (h) If, at the time of the completion of the technical preparations for international publication, the 
time limit for amending the claims under Article 19 has not expired, th e pamphlet shall refer to that 
fact and indicate that, should the claims be amen ded under Article 19, then, promptly after such 
amendments, either the pamphlet (containing the claims as amended) wi ll be republished or a 
statement reflecting all the amendments will be publishe d. In the latter case, at least the front page and 
the claims shall be republished and, if a statement un der 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) The Administrative Instructions shall determin e the cases in which the various alternatives 
referred to in paragraphs ( g) and ( h) shall apply. Such determinati on shall depend on the volume and 
complexity of the amendments and/or the volume of the international application and the cost factors. 
 
48.3   Languages 
      (a) If the international application is filed in  Chinese, English, French, German, Japanese, 
Russian or Spanish (“languages of publication”), that  application shall be published in the language in 
which it was filed.  IP/N/1/AUS/P/6 
Page 238  
 
     (a
bis) If the international application is not filed in a language of publication and a 
translation into a language of publication has been fu rnished under Rule 12.3, that application shall be 
published in the language of that translation.  
     (b) If the international application is filed in a language which is not a language of publication 
and no translation into a language of publication is re quired under Rule 12.3 (a), that application shall 
be published in English translation.  The translati on shall be prepared under the responsibility of the 
International Searching Authority, which shall be obliged to have it ready in time to permit 
international publication by the prescribed date, or , where Article 64 (3) (b) applies, to permit the 
communication under Article 20 by the end of the 19t h month after the priority date.  Notwithstanding 
Rule 16.1 (a), the International Searching Author ity may charge a fee for the translation to the 
applicant.  The International Searching Authority sh all give the applicant an opportunity to comment 
on the draft translation.  The International Search ing Authority shall fix a time limit reasonable under 
the circumstances of the case for such comments.  If there is no time to take the comments of the 
applicant into account before the translation is co mmunicated or if there is a difference of opinion 
between the applicant and the said Authority as to the correct translation, the applicant may send a 
copy of his comments, or what remains of them , to the International Bureau and each designated 
Office to which the translation was communicated .  The International Bureau shall publish the 
relevant portions of the comments together with the translation of the International Searching 
Authority or subsequently to the publication of such translation. 
 
     (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 publishe d both in that language and in English. The 
translations shall be prepared under the responsibility of the International Bureau. 
 
48.4   Earlier Publication on the Applicant’s Request 
      (a) Where the applicant asks for publication under Articles 21 (2) ( b) and 64 (3) ( c) (i) and the 
international search report, or the declaration referred to in Article 17 (2) ( a), is not yet available for 
publication together with the international applicatio n, the International Bureau  shall collect a special 
publication fee whose amount shall be fixed in the Administrative Instructions.       (b) Publication under Articles 21 (2) ( b) and 64 (3) ( c) (i) shall be effected by the International 
Bureau promptly after the applicant has aske d for it and, where a special fee is due under 
paragraph ( a), after receipt of such fee. 
 
48.5   Notification of National Publication 
      Where the publication of the international app lication by the International Bureau is governed by 
Article 64 (3) ( c) (ii), the national Office concerned shall,  promptly after effecting the national 
publication referred to in the said provision, notify the International Bureau of the fact of such 
national publication. 
 
48.6   Announcing of Certain Facts 
 
     (a
) If any notification under Rule 29.1 ( a) (ii) reaches the International Bureau at a time later than 
that at which it was able to prevent the internati onal publication of the international application, the 
International Bureau shall promptly publish a no tice in the Gazette reproducing the essence of such 
notification.  IP/N/1/AUS/P/6 
Page 239 
 
 
     (c) If the international application, the designation of any designated State or the priority claim is 
withdrawn under Rule 90bis after the technical preparations for international publication have been 
completed, notice of the withdrawal  shall be published in the Gazette. 
 
Rule 49 
Copy, Translation and Fee under Article 22 
 
49.1   Notification 
 
     (a) Any Contracting State requiring the furnishing of a translation or the payment of a national 
fee, or both, under Article 22, shall notify the International Bureau of:   (i) the languages from which and the langua ge into which it requires translation, 
  (ii) the amount of the national fee. 
 
     (a
bis) Any Contracting State not requiring the furn ishing, under Article 22, by the applicant 
of a copy of the international application (e ven though the communication of the copy of the 
international application by the International Bureau under Rule 47 has not taken place by the 
expiration of the time limit applicable under Ar ticle 22) shall notify the International Bureau 
accordingly. 
 
     (ater) Any Contracting State which, pursuant to Article 24 (2), maintains, if it is a 
designated State, the effect provided for in Article  11 (3) even though a copy of the international 
application is not furnished by the applicant by  the expiration of the time limit applicable under 
Article 22 shall notify the Inte rnational Bureau accordingly. 
 
     (b) Any notification received by the Inte rnational Bureau under paragraphs ( a), (abis) or ( ater) 
shall be promptly published by the International Bureau in the Gazette. 
 
     (c) If the requirements under paragraph ( a) change later, such changes shall be notified by the 
Contracting State to the International Bureau and that Bureau shall promptly publish the notification 
in the Gazette. If the change means that translati on is required into a langua ge which, before the 
change, was not required, such change shall be  effective only with respect to international 
applications filed later than 2 months after th e publication of the notification in the Gazette. 
Otherwise, the effective date of any change sh all be determined by the Contracting State. 
 
49.2   Languages 
      The language into which translation may be required must be an official language of the 
designated Office. If there are several of such la nguages, no translation may be required if the 
international application is in one of them. If th ere are several official languages and a translation 
must be furnished, the applicant may choose any of those languages. Notwithstanding the foregoing 
provisions of this paragraph, if there are several official languages but the national law prescribes the 
use of one such language for foreigners, a tran slation into that language may be required. 
 
49.3   Statements under Article 19; Indications under Rule 13
bis.4 
      For the purposes of Article 22 and the presen t Rule, any statement made under Article 19 (1) and 
any indication furnished under Rule 13
bis.4 shall, subject to Rule 49.5 ( c) and ( h), be considered part 
of the international application. 
 
49.4   Use of National Form IP/N/1/AUS/P/6 
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      No applicant shall be required to use a na tional form when performing the acts referred to in 
Article 22. 
 
49.5   Contents of and Physical Requirements for the Translation 
 
     (a) For the purposes of Article 22, the translation of  the international application shall contain the 
description (subject to paragraph (a
bis)), the claims, any text matter of the drawings and the abstract. If 
required by the designated Office, the transl ation shall also, subject to paragraphs ( b), (cbis) and ( e), 
 
 (i) contain the request,   (ii) if the claims have been amended under Article 19, contain both the claims as filed 
and the claims as amended, and 
 
 (iii) be accompanied by a copy of the drawings.  
     (a
bis) No designated Office shall require the appli cant to furnish to it a translation of any 
text matter contained in the sequence listing part of the description if such sequence listing part 
complies with Rule 12.1 (d) and if the description complies with Rule 5.2 (b). 
      (b) Any designated Office requiring the furnishing of  a translation of the request shall furnish 
copies of the request form in the language of the tran slation free of charge to the applicants. The form 
and contents of the request form in  the language of the translation shall not be different from those of 
the request under Rules 3 and 4; in particular, the re quest form in the language of the translation shall 
not ask for any information that is not in the requ est as filed. The use of the request form in the 
language of the translation shall be optional.       (c) Where the applicant did not furnish a transla tion of any statement made under Article 19 (1), 
the designated Office may disregard such statement. 
 
     (c
bis) Where the applicant furnishes, to a designated Office which requires under 
paragraph ( a) (ii) a translation of both the claims as filed and the claims as amended, only one of the 
required two translations, the designated Office may disregard the claims of which a translation has 
not been furnished or invite the applicant to furn ish the missing translation within a time limit which 
shall be reasonable under the circumstances and shall be fixed in the invitation. Where the designated 
Office chooses to invite the applicant to furnish th e missing translation and the latter is not furnished 
within the time limit fixed in the invitation, th e designated Office may disregard those claims of 
which a translation has not been furnished or c onsider the international application withdrawn. 
 
     (d) If any drawing contains text matter, the translati on of that text matter shall be furnished either 
in the form of a copy of the original drawing with the translation pasted on the original text matter or 
in the form of a drawing executed anew.       (e) Any designated Office requiring under paragraph ( a) the furnishing of a copy of the drawings 
shall, where the applicant failed to furnish such c opy within the time limit applicable under Article 22, 
invite the applicant to furnish su ch copy within a time limit which shall be reasonable under the 
circumstances and shall be fixed in the invitation.       (f) The expression “Fig.” does not requi re translation into any language. 
 
     (g) Where any copy of the drawings or drawing executed anew which has been furnished under 
paragraph ( d) or ( e) does not comply with the physical requirements referred to in Rule 11, the IP/N/1/AUS/P/6 
Page 241 
 
 
designated Office may invite the applicant to correct  the defect within a time limit which shall be 
reasonable under the circumstances and shall be fixed in the invitation.       (h) Where the applicant did not furnish a translation of the abstract or of any indication furnished 
under Rule 13
bis.4, the designated Office shall invite the app licant to furnish such translation, if it 
deems it to be necessary, within a time limit whic h shall be reasonable under the circumstances and 
shall be fixed in the invitation.       (i) Information on any requirement and practice of designated Offices under the second sentence 
of paragraph ( a) shall be published by the Inte rnational Bureau in the Gazette. 
      (j) No designated Office shall require that the tran slation of the international application comply 
with physical requirements other than those prescr ibed for the international application as filed. 
      (k) Where a title has been established by the Inte rnational Searching Authority pursuant to 
Rule 37.2, the translation shall contain the title as established by that Authority. 
 
     (l) If, on July 12, 1991, paragraph ( c
bis) or paragraph ( k) is not compatible with the national law 
applied by the designated Office, the paragraph concer ned shall not apply to that designated Office for 
as long as it continues not to be compatible with th at law, provided that the said Office informs the 
International Bureau accordingly by December 31, 1991. The information received shall be promptly 
published by the International Bureau in the Gazette.  
Rule 50 
Faculty under Article 22 (3) 
 50.1   Exercise of Faculty 
      (a) Any Contracting State allowing a time limit expiring later than the time limits provided for in 
Article 22 (1) or (2) shall notify the International Bureau of the time limits so fixed. 
 
     (b) Any notification received by the In ternational Bureau under paragraph ( a) shall be promptly 
published by the International Bureau in the Gazette.       (c) Notifications concerning the shortening of the prev iously fixed time limit shall be effective in 
relation to international applicati ons filed after the expiration of 3 months computed from the date on 
which the notification was published by the International Bureau. 
      (d) Notifications concerning the lengthening of the previously fixed time limit shall become 
effective upon publication by the International Bureau  in the Gazette in respect of international 
applications pending at the time or filed after the date  of such publication, or, if the Contracting State 
effecting the notification fixes some later date, as from the latter date. 
 
Rule 51 
Review by Designated Offices 
 
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 Rules 20.7 (i), 24.2 ( c), 29.1 ( a) (ii), or 29.1 ( b). 
 
51.2   Copy of the Notice 
 IP/N/1/AUS/P/6 
Page 242  
 
     Where the applicant, after having received a negative determination unde r Article 11 (1), requests 
the International Bureau, under Article 25 (1), to se nd copies of the file of the purported international 
application to any of the named Offices he has attemp ted to designate, he shall attach to his request a 
copy of the notice referred to in Rule 20.7 (i). 
 
51.3   Time Limit for Paying National Fee and Furnishing Translation 
      The time limit referred to in Article 25 (2) ( a) shall expire at the same time as the time limit 
prescribed in Rule 51.1.  
Rule 51
bis. 
Certain National Requirements Allowed under Article 27 (1), (2), (6) and (7) 
 
51bis.1   Certain National Requirements Allowed 
 
     (a) The documents referred to in Article 27 (2) (ii) , or the evidence referred to in Article 27 (6), 
which the applicant may be required to furnish un der the national law applicable by the designated 
Office include, in particular:   (i) any document relating to the identity of the inventor, 
 
 (ii) any document relating to any transfer or assignment of the right to the application,   (iii) any document containing an oath or declaration by the inventor alleging his 
inventorship, 
 
 (iv) any document containing a declaration by the applicant designating the inventor or 
alleging the right to the application, 
  (v) any document containing any proof of the right of the applicant to claim priority 
where he is different from the applicant having filed the earlier application the 
priority of which is claimed, 
  (vi) any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, 
such as disclosures resulting from abuse,  disclosures at certain exhibitions and 
disclosures by the applicant during a certain period of time. 
 
     (b) The national law applicable by the designated Office may, in accordance with Article 27 (7), 
require that   (i) the applicant be represented by an agen t having the right to represent applicants 
before that Office and/or have an addre ss in the designated State for the purpose of 
receiving notifications, 
  (ii) the agent, if any, representing the a pplicant be duly appointed by the applicant. 
      (c) The national law applicable by the designated Office may, in accordance with Article 27 (1), 
require that the international application, the tran slation thereof or any document relating thereto be 
furnished in more than one copy.       (d) The national law applicable by the d esignated Office may, in accordance with 
Article 27 (2) (ii), require that the translation of  the international application furnished by the 
applicant under Article 22 be verified by the applican t or the person having translated the international IP/N/1/AUS/P/6 
Page 243 
 
 
application in a statement to the effect that, to th e best of his knowledge, the translation is complete 
and faithful. 
 
51bis.2   Opportunity to Comply with National Requirements 
 
     (a) Where any of the requirements referred to in Rule 51bis.1, or any other requirement of the 
national law applicable by the designated Office wh ich that Office may apply under Article 27 (1), 
(2), (6) or (7), is not already fulfilled during the same period within which the requirements under 
Article 22 must be complied with, the applicant shall have an opportunity to comply with the 
requirement after the expiration of that period. 
      (b) The national law applicable by the d esignated Office may, in accordance with 
Article 27 (2) (ii), require that the applicant, upon invitation by the designated Office, furnish a 
certification of the translation of the internati onal application by a public authority or a sworn 
translator, if the designated Office deems such certif ication to be necessary under the circumstances, 
within a time limit which shall be reasonable under  the circumstances and shall be fixed in the 
invitation.  
Rule 52 
Amendment of the Claims, the Description,  and the Drawings, before Designated Offices 
 52.1   Time Limit 
      (a) In any designated State in which processing or  examination starts without special request, the 
applicant shall, if he so wi shes, exercise the right under Article 28 within one month from the 
fulfilment of the requirements under Article 22, provided that, if the communication under Rule 47.1 
has not been effected by the expiration of the time limit applicable under Article  22, he shall exercise 
the said right not later than 4 months after such expiration date. In either case, the applicant may 
exercise the said right at any other time if so permitted by the national law of the said State. 
 
     (b) In any designated State in which the national law provides that examination starts only on 
special request, the time limit within or the time at which the applicant may exercise the right under 
Article 28 shall be the same as that provided by th e national law for the filing of amendments in the 
case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable 
under paragraph ( a). 
 
PART C 
 
Rules Concerning Chapter II of the Treaty 
 
Rule 53 
The Demand 
 
53.1   Form 
      (a) The demand shall be made on a printed form or be presented as a computer print-out. The 
particulars of the printed form and of a demand presented as a computer print-out shall be prescribed 
by the Administrative Instructions.       (b) Copies of printed demand forms shall be furnished free of charge by the receiving Office or 
by the International Preliminary Examining Authority. 
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53.2   Contents 
      (a) The demand shall contain: 
  (i) a petition, 
 
 (ii) indications concerning the applican t and the agent if there is an agent, 
  (iii) indications concerning the interna tional application to which it relates, 
 
 (iv) election of States, 
  (v) where applicable, a statement concerning amendments.       (b) The demand shall be signed. 
 
53.3   The Petition 
      The petition shall be to the following effect and shall preferably be worded as follows: “Demand 
under Article 31 of the Patent Cooperation Treaty: The undersigned requests that the international 
application specified below be the subject of inte rnational preliminary examination according to the 
Patent Cooperation Treaty.” 
 
53.4   The Applicant 
      As to the indications concerning the applican t, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall 
apply mutatis  mutandis . Only applicants for the elected Stat es are required to be indicated in the 
demand. 
 
53.5   Agent or Common Representative 
      If an agent or common representative is d esignated, the demand shall so indicate. Rules 4.4 
and 4.16 shall apply, and Rule 4.7 shall apply mutatis  mutandis . 
 IP/N/1/AUS/P/6 
Page 245 
 
 
53.6   Identification of the International Application 
      The international application shall be identif ied by the name and address of the applicant, the title 
of the invention, the international filing date (if known to the applicant) and the international 
application number or, where such number is not kn own to the applicant, the name of the  receiving 
Office with which the international application was filed. 
 
53.7   Election of States 
      (a) The demand shall indicate at least one Contr acting State, from  among those States which are 
designated and are bound by Chapter II of the  Tr eaty (“eligible States”), as an elected state. 
      (b) Election of Contracting States in the demand shall be made: 
  (i) by an indication that all eligible States are elected, or, 
 
 (ii) in the case of States which have been designated for the purpose of obtaining national 
patents, by an indication of those eligible States that are elected, and, in the case of 
States which have been designated for the purpose of obtaining a regional patent, by an indication of the regional patent concerne d together with either an indication that 
all eligible States party to the regional pa tent treaty concerned are elected or an 
indication of those among the said States that are elected. 
 
53.8   Signature 
      (a) Subject to paragraph ( b), the demand shall be signed by the applicant or, if there is more than 
one applicant, by all applicants making the demand. 
      (b) Where two or more applicants file a demand which elects a State whose national law requires 
that national applications be filed by the inventor and where an applicant for that elected State who is 
an inventor refused to sign the demand or could not be found or reached after diligent effort, the 
demand need not be signed by that applicant (“the a pplicant concerned”) if it is signed by at least one 
applicant and 
  (i) a statement is furnished explaining, to th e satisfaction of the International Preliminary 
Examining Authority, the lack of signature of the applicant concerned, or 
 
 (ii) the applicant concerned did not sign the request but the requirements of Rule 4.15 ( b) 
were complied with. 
 53.9   Statement Concerning Amendments 
      (a) If amendments under Article 19 have been made , the statement concerning amendments shall 
indicate whether, for the purposes of the internationa l preliminary examination, the applicant wishes 
those amendments   (i) to be taken into account, in which case a co py of the amendments shall preferably be 
submitted with the demand, or 
 
 (ii) to be considered as reversed  by an amendment under Article 34. 
      (b) If no amendments under Article 19 have been  made and the time limit for filing such 
amendments has not expired, the statement may in dicate that the applicant wishes the start of the 
international preliminary examination to be  postponed in accordance with Rule 69.1 ( d). IP/N/1/AUS/P/6 
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      (c) If any amendments under Article 34 are submitte d with the demand, the statement shall so 
indicate.  
Rule 54 
The Applicant Entitled to Make a Demand 
 
54.1   Residence and Nationality 
      (a) Subject to the provisions of paragraph ( b), the residence or nationality of the applicant shall, 
for the purposes of Article 31 (2), be determined according to Rule 18.1 ( a) and ( b). 
       (b) The International Preliminary Examining Author ity shall, in the circumstances specified in 
the Administrative Instructions, request the receivi ng Office or, where the international application 
was filed with the International Bureau as receiving Office, the national office of, or acting for, the 
Contracting State concerned to decide the question wh ether the applicant is a resident or national of 
the Contracting State of which he claims to be a resident or national. The International Preliminary 
Examining Authority shall inform the applicant of  any such request. The applicant shall have an 
opportunity to submit arguments directly to the O ffice concerned. The Office concerned shall decide 
the said question promptly. 
 
54.2   Right to Make a Demand 
      The right to make a demand under Article 31 (2 ) shall exist if the applicant making the demand or, 
if there are two or more applicants, at least one of them is a resident or national of a Contracting State bound by Chapter II and the international applicati on has been filed with a receiving Office of or 
acting for a Contracting State bound by Chapter II. 
 
54.3   International Applications Filed with  the International Bureau as Receiving Office 
       Where the international application is file d with the International Bureau as receiving Office under 
Rule 19.1 (a) (iii), the International Bureau shall, for the purposes of Article 31 (2) (a), be considered 
to be acting for the Contracting State of whic h the applicant is a resident or national. 
 
54.4   Applicant Not Entitled to Make a Demand 
       If the applicant does not have the right to make a demand or, in the case of two or more 
applicants, if none of them has the right to ma ke a demand under Rule 54.2, the demand shall be 
considered not to have been submitted.  
Rule 55 
Languages (International Preliminary Examination) 
 
55.1   Language of Demand 
      The demand shall be in the language of the international application or, if the international 
application has been filed in a language other th an the language in which it is published, in the 
language of publication. However, if a translation of the international application is required under 
Rule 55.2, the demand shall be in the language of that translation. 
 IP/N/1/AUS/P/6 
Page 247 
 
 
55.2   Translation of International Application 
      (a) Where neither the language in which the interna tional application is filed nor the language in 
which the international applica tion is published is accepted by the International Preliminary 
Examining Authority that is to carry out the interna tional preliminary examination, the applicant shall, 
subject to paragraph (b), furnish with the demand a translation of the international application into a 
language which is both:   (i) a language accepted by that Authority, and  
 (ii) a language of publication. 
      (b) Where a translation of the international application into a language referred to in 
paragraph (a) was transmitted to the Internationa l Searching Authority under Rule 23.1 (b) and the 
International Preliminary Examining Authority is part of the same national Office or 
intergovernmental organization as the Internationa l Searching Authority, the applicant need not 
furnish a translation under paragraph (a).  In such  a case, unless the applicant furnishes a translation 
under paragraph (a), the international preliminary exam ination shall be carried out on the basis of the 
translation transmitted under Rule 23.1 (b).       (c) If the requirement of paragraph (a) is not complied with and paragraph ( b) does not apply, the 
International Preliminary Examining Authority sha ll invite the applicant to furnish the required 
translation within a time limit wh ich shall be reasonable under the circ umstances. 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 Authority at any time before a decision is taken.  
     (d) If the applicant complies with the invitation with in the time limit under paragraph (c), the said 
requirement shall be considered to have been co mplied with.  If the applicant fails to do so, the 
demand shall be considered not to have been subm itted and the International Preliminary Examining 
Authority shall so declare. 
 
55.3   Translation of Amendments 
 
     (a) Where a translation of the international application is required under Rule 55.2, any 
amendments which are referred to in the statem ent concerning amendments under Rule 59.3 and 
which the applicant wishes to be taken into account  for the purposes of the international preliminary 
examination, and any amendments under Article 19 which are to be taken into account under Rule 
66.1 ( c), shall be in the language of that translation. Where such amendments have been or are filed in 
another language, a translation shall also be furnished.       (b) Where the required translation of an amendment referred to in paragraph ( a) is not furnished, 
the International Preliminary Examining Authority shall invite the applicant to furnish the missing 
translation within a time limit wh ich shall be reasonable under the circ umstances. 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 Authority at any time before a decision is taken.       (c) If the applicant fails to comply with the i nvitation within the time limit under paragraph ( b), 
the amendment shall not be taken into account fo r the purposes of the international preliminary 
examination. 
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Rule 56 
Later Elections 
 
56.1   Elections Submitted Later Than the Demand 
 
     (a) The election of States subsequent to the submis sion of the demand (“later election”) shall be 
effected by a notice submitted to the Internationa l Bureau. The notice shall identify the international 
application and the demand, and shall include an indication as referred to in Rule 53.7 ( b) (ii). 
      (b) Subject to paragraph ( c), the notice referred to in paragraph ( a) shall be signed by the 
applicant for the elected States concerned or, if ther e is more than one applicant for those States, by 
all of them.       (c) Where two or more applicants file a notice e ffecting a later election of a State whose national 
law requires that national applications  be filed by the inventor and where an applicant for that elected 
State who is an inventor refused to sign the noti ce or could not be found or reached after diligent 
effort, the notice need not be signed by that applican t (“the applicant concerned”) if it is signed by at 
least one applicant and   (i) a statement is furnished explaining, to th e satisfaction of the International Bureau, the 
lack of signature of the applicant concerned, or 
 
 (ii) the applicant concerned did not sign the request but the requirements of Rule 4.15 ( b) 
were complied with, or did not sign the demand but the requirements of Rule 53.8 ( b) 
were complied with. 
 
     (d) An applicant for a State elected by a later election need not have been indicated as an 
applicant in the demand.       (e) If a notice effecting a later election is subm itted after the expiration of 19 months from the 
priority date, the International Bureau shall notif y the applicant that the election does not have the 
effect provided for under Article 39 (1) ( a) and that the acts referred to in Article 22 must be 
performed in respect of the elected Office concerne d within the time limit applicable under Article 22. 
      (f) If, notwithstanding paragraph ( a), a notice effecting a later election is submitted by the 
applicant to the International Preliminary Examinin g Authority rather than the International Bureau, 
that Authority shall mark the date of receipt on th e notice and transmit it promptly to the International 
Bureau. The notice shall be consider ed to have been submitted to the International Bureau on the date 
marked. 
 
56.2   Identification of the International Application 
      The international application sha ll be identified as provided in Rule 53.6. 
 
56.3   Identification of the Demand 
      The demand shall be identified by the date  on which it was submitted and by the name of the 
International Preliminary Examining Authority to which it was submitted.  
56.4   Form of Later Elections 
      The notice effecting the later electi on shall preferably be worded as follows:  
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     “In relation to the international application file d with . . . on . . . under No. . . . by . . . (applicant) 
(and the demand for international pr eliminary examination submitted on . . . to . . .), the undersigned 
elects the following additional State(s) under Artic le 31 of the Patent Cooperation Treaty: . . .”. 
 
56.5   Language of Later Elections 
 
     The later election shall be in the language of the demand.  
Rule 57 
The Handling Fee 
 57.1   Requirement to Pay 
      Each demand for international preliminary exam ination shall be subject to the payment of a fee for 
the benefit of the International Bureau (“handli ng fee”) to be collected by the International 
Preliminary Examining Authority to which the demand is submitted. 
 
57.2   Amount 
      (a) The amount of the handling fee is as set out in the Schedule of Fees. 
 
     (c) The handling fee shall be payable in the currenc y or one of the currencies prescribed by the 
International Preliminary Examining Authority (“ prescribed currency”), it being understood that, 
when transferred by that Authority to the Internati onal Bureau, it shall be freely convertible into Swiss 
currency.  The amount of the handling fee shall be established, in each pres cribed currency, for each 
International Preliminary Examining Authority wh ich prescribes the payment of the handling fee in 
any currency other than Swiss currency, by the Di rector General after consultation with the Office 
with which consultation takes place under Rule 15.2 ( b) in relation to that currency, or, if there is no 
such Office, with the Authority which prescribes  payment in that currency.  The amount so 
established shall be the equivalent, in round figures,  of the amount in Swiss currency set out in the 
Schedule of Fees.  It shall be notified by the Inte rnational Bureau to each International Preliminary 
Examining Authority prescribing payment in that prescribed currency and shall be published in the 
Gazette. 
      (d) Where the amount of the handling fee set out  in the Schedule of Fees is changed, the 
corresponding amounts in the prescribed currencies sh all be applied from the same date as the amount 
set out in the amended Schedule of Fees. 
 
     (e) Where the exchange rate between Swiss cu rrency and any prescribed currency becomes 
different from the exchange rate last applied, th e Director General shall establish the new amount in 
the prescribed currency according to directives give n by the Assembly. The newly established amount 
shall become applicable two months after its publi cation in the Gazette, provided that the interested 
International Preliminary Examining Authority and the Director General may agree on a date falling 
during the said two-month period in which case the said amount shall become applicable for that 
Authority from that date. 
 
57.3   Time Limit for Payment;  Amount Payable  
 
     The handling fee shall be paid within one month from the date on which the demand was 
submitted, provided that, where the demand was transmitted to the International Preliminary 
Examining Authority under Rule 59.3, the handling f ee shall be paid within one month from the date 
of receipt by that Authority.  The amount payable shall be the amount applicable on that date of submittal or date of receipt, as the case may be.  For the purposes of the preceding two sentences, 
Rule 59.3 ( e) shall not apply. IP/N/1/AUS/P/6 
Page 250  
 
 
57.6   Refund 
      The International Preliminary Examining Aut hority shall refund the handling fee to the applicant: 
 
 (i) if the demand is withdrawn before the demand has been sent by that Authority to the 
International Bureau, or 
  (ii) if the demand is considered, under Rule 54.4, not to have been submitted. 
 
Rule 58 
The Preliminary Examination Fee 
 
58.1   Right to Ask for a Fee 
 
     (a) Each International Preliminary Examining Aut hority may require that the applicant pay a fee 
(“preliminary examination fee”) for its own benef it for carrying out the international preliminary 
examination and for performing all other tasks en trusted to International Preliminary Examining 
Authorities under the Treaty and these Regulations.       (b) The amount of the preliminary examination fee, if any, shall be fixed by the International 
Preliminary Examining Authority.  As to the time limit for payment of the preliminary examination 
fee and the amount payable, the provisions of Ru le 57.3 relating to the handling fee shall apply 
mutatis mutandis . 
      (c) The preliminary examination fee shall be paya ble directly to the International Preliminary 
Examining Authority. Where that Authority is a na tional Office, it shall be payable in the currency 
prescribed by that Office, and where the Authority is  an intergovernmental organization, it shall be 
payable in the currency of the State in which the in tergovernmental organization is located or in any 
other currency which is freely convertible into the currency of the said State. 
 
58.3   Refund 
 
     The International Preliminary Examining Author ities shall inform the International Bureau of the 
extent, if any, to which, and the conditions, if a ny, under which, they will refund any amount paid as a 
preliminary examination fee where the demand is c onsidered as if it had not been submitted, and the 
International Bureau shall promp tly publish such information. 
 
Rule 58
bis. 
Extension of Time Limits for Payment of Fees 
 
58bis.1   Invitation by the International Preliminary Examining Authority  
 
     (a) Where, by the time they are due under Rules 57.3 and 58.1 ( b), the International Preliminary 
Examining Authority finds that no fees were paid to it, or that the amount paid to it is insufficient  to 
cover the handling fee and the preliminary examination fee, the Authority shall invite the applicant to 
pay to it the amount required to cover those fees, toge ther with, where applicable, the late payment fee 
under Rule 58bis.2, within a time limit of one month from the date of the invitation. 
      (b) Where the International Preliminary Examining Authority has sent an invitation under 
paragraph ( a) and the applicant has not, within the time limit referred to in that paragraph, paid in full 
the amount due, including, where applicable, the late payment fee under Rule 58 bis.2, the demand IP/N/1/AUS/P/6 
Page 251 
 
 
shall, subject to paragraph ( c), be considered as if it had not be en submitted and the International 
Preliminary Examining Authority shall so declare.       (c) Any payment received by the International Preliminary Examining Authority before that 
Authority sends the invitation under paragraph ( a) shall be considered to have been received before 
the expiration of the time limit under Rule 57.3 or 58.1 ( b), as the case may be. 
      (d) Any payment received by the International Pr eliminary Examining Authority before that 
Authority proceeds under paragraph ( b) shall be considered to have been received before the 
expiration of the time limit under paragraph ( a). 
 
58
bis.2  Late Payment Fee  
 
     (a) The payment of fees in response to an invitation under Rule 58bis.1 (a) may be subjected by 
the International Preliminary Examining Authority to the payment to it, for its own benefit, of a late 
payment fee.  The amount of that fee shall be:   (i) 50% of the amount of unpaid fees which is specified in the invitation, or,   (ii) if the amount calculated under item (i) is  less than the handling fee, an amount equal 
to the handling fee. 
      (b) The amount of the late payment fee shall not, however, exceed double the amount of the 
handling fee.  
Rule 59 
The Competent International P reliminary Examining Authority 
 
59.1   Demands under Article 31 (2) (a) 
 
     (a) For demands made under Article 31 (2) ( a), each receiving Office of or acting for a 
Contracting State bound by the provisions of Chapter II shall, in accordance with the terms of the 
applicable agreement referred to in Article 32 (2 ) and (3), inform the International Bureau which 
International Preliminary Examining Authority is  or which International Preliminary Examining 
Authorities are competent for the international prelim inary examination of international applications 
filed with it. The International Bureau shall pr omptly publish such information. Where several 
International Preliminary Examining Authorities ar e competent, the provisions of Rule 35.2 shall 
apply mutatis  mutandis . 
      (b) Where the international application was file d with the International Bureau as receiving 
Office under Rule 19.1 ( a) (iii), Rule 35.3 ( a) and ( b) shall apply mutatis mutandis . Paragraph ( a) of 
this Rule shall not apply to the Internatio nal Bureau as receiving Office under Rule 19.1 ( a) (iii). 
 
59.2   Demands under Article 31 (2) (b) 
      As to demands made under Article 31 (2) ( b), the Assembly, in specifying the International 
Preliminary Examining Authority competent for intern ational applications filed with a national Office 
which is an International Preliminary Examining Author ity, shall give preference to that Authority; if 
the national Office is not an International Prelimin ary Examining Authority, the Assembly shall give 
preference to the International Preliminary Ex amining Authority recommended by that Office.  
 
59.3   Transmittal of Demand to the Competent In ternational Preliminary Examining Authority 
 IP/N/1/AUS/P/6 
Page 252  
 
     (a) If the demand is submitted to a receiving Office, an International Searching Authority, or an 
International Preliminary Examining Authority which is not competent for the international 
preliminary examination of the international applicat ion, that Office or Authority shall mark the date 
of receipt on the demand and, unless it decides to proceed under paragraph ( f), transmit the demand 
promptly to the International Bureau. 
 
     (b) If the demand is submitted to the Internationa l Bureau, the International Bureau shall mark 
the date of receipt on the demand.       (c) Where the demand is transmitted to the International Bureau under paragraph ( a) or submitted 
to it under paragraph ( b), the International Bureau shall promptly: 
 
(i) if there is only one competent Interna tional Preliminary Examining Authority, 
transmit the demand to that Authority and inform the applicant accordingly, or 
 
 (ii) if two or more International Preliminary Examining Authorities are competent, invite 
the applicant to indicate, within 15 days fro m the date of the invitation or 19 months 
from the priority date, whichever is later,  the competent International Preliminary 
Examining Authority to which the demand should be transmitted. 
      (d) Where an indication is furnis hed as required under paragraph ( c) (ii), the International Bureau 
shall promptly transmit the demand to the competen t International Preliminary Examining Authority 
indicated by the applicant.  Where no indication is so  furnished, the demand shal l be considered not to 
have been submitted and the Interna tional Bureau shall so declare. 
      (e) Where the demand is transmitted to a comp etent International Preliminary Examining 
Authority under paragraph ( c), it shall be considered to have been  received on behalf of that Authority 
on the date marked on it under paragraph ( a) or ( b), as applicable, and the demand so transmitted shall 
be considered to have been receive d by that Authority on that date. 
      (f) Where an Office or Authority to which the demand is submitted under paragraph ( a) decides 
to transmit that demand directly to the competent International Preliminary Examining Authority, 
paragraphs ( c) to ( e) shall apply mutatis mutandis . 
 
Rule 60 
Certain Defects in the Demand or Elections 
 
60.1   Defects in the Demand 
      (a) If the demand does not comply with the re quirements specified in Rules 53.1, 53.2 ( a) (i) 
to (iv), 53.2 ( b), 53.3 to 53.8 and 55.1, the International Preliminary Examining Authority shall invite 
the applicant to correct the defects 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 Exam ining Authority at any time before a decision is 
taken.       (b) If the applicant complies with the invita tion within the time limit under paragraph ( a), the 
demand shall be considered as if it had been recei ved on the actual filing date, provided that the 
demand as submitted contained at least one election a nd permitted the international application to be 
identified; otherwise, the demand shall be consider ed as if it had been received on the date on which 
the International Preliminary Examining Authority receives the correction.  IP/N/1/AUS/P/6 
Page 253 
 
 
     (c) Subject to paragraph ( d), if the applicant does not comply with the invitation within the time 
limit under paragraph ( a), the demand shall be considered as if it had not been submitted and the 
International Preliminary Examining Authority shall so declare.       (d) Where, after the expiration of the time limit under paragraph ( a), a signature required under 
Rule 53.8 or a prescribed indication is lacking in respect of an applicant for a certain elected State, the 
election of that State shall be considered as if it had not been made.       (e) If the defect is noticed by the International Bur eau, it shall bring the defect to the attention of 
the International Preliminary Examining Author ity, which shall then proceed as provided in 
paragraphs ( a) to ( d). 
      (f) If the demand does not contain a statement concerning amendments, the International 
Preliminary Examining Authority shall pro ceed as provided for in Rules 66.1 and 69.1 ( a) or ( b). 
 
     (g) Where the statement concerning amendments c ontains an indication that amendments under 
Article 34 are submitted with the demand (Rule 53.9 ( c)) but no such amendments are, in fact, 
submitted, the International Preliminary Examining Au thority shall invite the applicant to submit the 
amendments within a time limit fixed in the invitation and shall proceed as provided for in 
Rule 69.1 ( e). 
 
60.2   Defects in Later Elections 
      (a) If the notice effecting a later election does not comply with the requirements of Rule 56, the 
International Bureau shall invite th e applicant to correct the defects 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 Internati onal Bureau at any time before a decision is taken. 
      (b) If the applicant complies with the invita tion within the time limit under paragraph ( a), the 
notice shall be considered as if it had been receive d on the actual filing date, provided that the notice 
as submitted contained at least one election and permitted the international application to be 
identified; otherwise, the notice shall be considered  as if it had been received on the date on which the 
International Bureau receives the correction. 
      (c) Subject to paragraph ( d), if the applicant does not comply with the invitation within the time 
limit under paragraph ( a), the notice shall be considered as if it had not been submitted and the 
International Bureau shall so declare. 
 
     (d) Where, in respect of an applicant for a certain  elected State, the signature required under Rule 
56.1 (
b) and ( c) or the name or address is lacking after the expiration of the time limit under 
paragraph ( a), the later election of that state shall be considered as if it had not been made. 
 
Rule 61 
Notification of the Demand and Elections 
 
61.1   Notification to the International Bureau and the Applicant 
      (a) The International Preliminary Examining Author ity shall indicate on the demand the date of 
receipt or, where applicable, the date referred to in Rule 60.1 ( b).  The International Preliminary 
Examining Authority shall promptly either send th e demand to the International Bureau and keep a 
copy in its files or send a copy to the Interna tional Bureau and keep the demand in its files. 
      (b) The International Preliminary Examining Author ity shall promptly notify the applicant of the 
date of receipt of the demand.  Where the demand has been cons idered under Rules 54.4, 55.2 ( d), IP/N/1/AUS/P/6 
Page 254  
 
58
bis.1 (b) or 60.1 ( c) as if it had not been submitted or where an election has been considered under 
Rule 60.1 ( d) as if it had not been made, the Internati onal Preliminary Examining Authority shall 
notify the applicant and the Inte rnational Bureau accordingly. 
 
     (c) The International Bureau shall promptly notify the applicant of the receipt, and the date of 
receipt, of any notice effecting a later election. That  date shall be the actual date of receipt by the 
International Bureau or, where applicable , the date referred to in Rule 56.1 ( f) or 60.2 ( b). Where the 
notice has been considered under Rule 60.2 ( c) as if it had not been submitted or where a later election 
has been considered under Rule 60.2 ( d) as if it had not been made, the International Bureau shall 
notify the applicant accordingly. 
 
61.2   Notification to the Elected Offices 
      (a) The notification provided for in Article 31 (7) shall be effected by the International Bureau. 
 
     (b) The notification shall indicate the number and fili ng date of the international application, the 
name of the applicant, the filing date of the appli cation whose priority is claimed (where priority is 
claimed), the date of receipt by the Internationa l Preliminary Examining Authority of the demand, 
and—in the case of a later election—the date of recei pt of the notice effecting the later election. The 
latter date shall be the actual date of receipt by th e International Bureau or, where applicable, the date 
referred to in Rule 56.1 ( f) or 60.2 ( b). 
      (c) The notification shall be sent to the elected Office together with the communication provided 
for in Article 20. Elections effected after such communication shall be notified promptly after they 
have been made.  
     (d) Where the applicant makes an express request to an elected Office unde r Article 40 (2) before 
the communication provided for in Article 20 has take n place, the International Bureau shall, upon 
request of the applicant or the elected Office, pr omptly effect that communication to that Office. 
 
61.3   Information for the Applicant 
 
     The International Bureau shall inform the app licant in writing of the notification referred to in Rule 
61.2 and of the elected Offices notified under Article 31 (7). 
 
61.4   Publication in the Gazette 
 
     Where a demand has been filed before the expiration of 19 months from the priority date, the International Bureau shall, promptly after the fili ng of the demand but not before the international 
publication of the international application, publis h in the Gazette information on the demand and the 
elected States concerned, as provided in the Administrative Instructions. 
 IP/N/1/AUS/P/6 
Page 255 
 
 
Rule 62 
Copy of Amendments Under Article 19  
for the International Preliminary Examining Authority 
 
62.1   Amendments Made Before the Demand is Filed 
 
     Upon receipt of a demand, or a copy ther eof, from the International Preliminary Examining 
Authority, the International Bureau shall prom ptly transmit a copy of any amendments under 
Article 19, and any statement referred to in that Arti cle, to that Authority, unless that Authority has 
indicated that it has already received such a copy.  
62.2  Amendments Made After the Demand is Filed 
      If, at the time of filing any amendments under Article 19, a demand has already been submitted, 
the applicant shall preferably, at the same time as he files the amendments with the International 
Bureau, also file with the International Preliminar y Examining Authority a copy of such amendments 
and any statement referred to in that Article.  In  any case, the International Bureau shall promptly 
transmit a copy of such amendments  and statement to that Authority. 
 
Rule 63 
Minimum Requirements for Internationa l Preliminary Examining Authorities 
 63.1   Definition of Minimum Requirements 
      The minimum requirements referred to  in Article 32 (3) shall be the following: 
 
 (i) the national Office or intergovernmental organization must have at least 100 full-time 
employees with sufficient technical qualifications to carry out examinations; 
  (ii) that Office or organization must have at its ready disposal at least the minimum 
documentation referred to in Rule 34, pr operly arranged for examination purposes; 
 
 (iii) that Office or organization must have a staff which is capable of examining in the 
required technical fields and which has th e language facilities to understand at least 
those languages in which the minimum doc umentation referred to in Rule 34 is 
written or is translated.  
 
Rule 64 
Prior Art for International Preliminary Examination 
 
64.1   Prior Art 
      (a) For the purposes of Article 33 (2) and (3), everyt hing made available to the public anywhere 
in the world by means of written disclosure (inc luding drawings and other illustrations) shall be 
considered prior art provided that such making available occurred prior to the relevant date. 
      (b) For the purposes of paragraph ( a), the relevant date will be: 
 
 (i) subject to item (ii), the international f iling date of the international application under 
international preliminary examination; 
  (ii) where the international application under international preliminary examination 
validly claims the priority of an earlier a pplication, the filing date of such earlier 
application. IP/N/1/AUS/P/6 
Page 256  
 
 
64.2   Non-Written Disclosures 
      In cases where the making available to the public  occurred by means of an oral disclosure, use, 
exhibition or other non-written means (“non-written discl osure”) before the releva nt date as defined in 
Rule 64.1 ( b) and the date of such non-written disclosure is  indicated in a written disclosure which has 
been made available to the public on a date which is the same as, or later than, the relevant date, the 
non-written disclosure shall not be considered part of  the prior art for the purposes of Article 33 (2) 
and (3). Nevertheless, the international preliminar y examination report shall call attention to such 
non-written disclosure in the manner provided for in Rule 70.9.  
64.3   Certain Published Documents 
      In cases where any application or any patent  which would constitute prior art for the purposes of 
Article 33 (2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was 
published on a date which is the same as, or later than, the relevant da te but was filed earlier than the 
relevant date or claimed the priori ty of an earlier application which had been filed prior to the relevant 
date, such published application or patent shall not be considered part of the prior art for the purposes 
of Article 33 (2) and (3). Nevertheless, the inte rnational preliminary examination report shall call 
attention to such application or patent in the manner provided for in Rule 70.10. 
 
Rule 65 
Inventive Step or Non-Obviousness 
 
65.1   Approach to Prior Art 
 
     For the purposes of Article 33 (3), the inte rnational preliminary examination shall take into 
consideration the relation of any particular claim to the prior art as a whole. It shall take into 
consideration the claim’s relation not only to indi vidual documents or parts thereof taken separately 
but also its relation to combinations of such documents or parts of documents, where such combinations are obvious to a person skilled in the art. 
 
65.2   Relevant Date 
      For the purposes of Article 33 (3), the relevant  date for the consideration of inventive step (non-
obviousness) is the date prescribed in Rule 64.1.  
 
Rule 66 
Procedure before the International Preliminary Examining Authority 
 
66.1   Basis of the International Preliminary Examination 
      (a) Subject to paragraphs ( b) to ( d), the international preliminar y examination shall be based on 
the international application as filed. 
     (b) The applicant may submit amendments under Artic le 34 at the time of filing the demand or, 
subject to Rule 66.4
bis, until the international preliminary examination report is established. 
 
     (c) Any amendments under Article 19 made before  the demand was filed shall be taken into 
account for the purposes of the international preliminary examination unless superseded, or 
considered as reversed, by an amendment under Article 34.  IP/N/1/AUS/P/6 
Page 257 
 
 
     (d) Any amendments under Article 19 made afte r the demand was filed and any amendments 
under Article 34 submitted to the Inte rnational Preliminary Examining Authority shall, subject to Rule 
66.4bis, be taken into account for the purposes of the international preliminary examination. 
 
     (e) Claims relating to inventions in respect of  which no international search report has been 
established need not be the subject of international preliminary examination. 
 
66.2   First Written Opinion of the Inter national Preliminary Examining Authority 
 
     (a) If the International Preliminary Examining Authority 
  (i) considers that any of the situati ons referred to in Article 34 (4) exists, 
  (ii) considers that the international prelimin ary examination report should be negative in 
respect of any of the claims because the invention claimed therein does not appear to 
be novel, does not appear to involve an inventive step (does not appear to be non-
obvious), or does not appear to be industrially applicable, 
  (iii) notices that there is some defect in the form or contents of the international 
application under the Treaty or these Regulations, 
 
 (iv) considers that any amendment goes beyond the disclosure in the international 
application as filed, 
  (v) wishes to accompany the internati onal preliminary examination report by 
observations on the clarity of the claims, the description, and the drawings, or the 
question whether the claims are fully supported by the description, 
  (vi) considers that a claim relates to an invention in respect of which no international 
search report has been established and has d ecided not to carry out the international 
preliminary examination in respect of that claim, or 
 
 (vii) considers that a nucleotide and/or amin o acid sequence listing is not available to it in 
such a form that a meaningful internati onal preliminary examination can be carried 
out, 
 
the said Authority shall notify th e applicant accordingly in writing.  Where the national law of the 
national Office acting as International Prelimin ary Examining Authority does not allow multiple 
dependent claims to be drafted in a manner diffe rent from that provided for in the second and third 
sentences of Rule 6.4 ( a), the International Preliminary Examini ng Authority may, in case of failure to 
use that manner of claiming, apply Article 34 (4) ( b). In such case, it shall notify the applicant 
accordingly in writing. 
 
     (b) The notification shall fully state the reasons fo r the opinion of the International Preliminary 
Examining Authority.       (c) The notification shall invite the applican t to submit a written reply together, where 
appropriate, with amendments. 
      (d) The notification shall fix a time limit for the reply. The time limit shall be reasonable under 
the circumstances. It shall normally be two months af ter the date of notification. In no case shall it be 
shorter than one month after the said date. It shall be  at least two months after the said date where the IP/N/1/AUS/P/6 
Page 258  
 
international search report is transmitted at the same tim e as the notification. It shall not be more than 
three months after the said date but may be extended if the applicant so requests before its expiration. 
 
66.3   Formal Response to the International Preliminary Examining Authority 
 
     (a) The applicant may respond to the in vitation referred to in Rule 66.2 ( c) of the International 
Preliminary Examining Authority by making amendmen ts or—if he disagrees with the opinion of that 
Authority—by submitting arguments, as the case may be, or do both.       (b) Any response shall be submitted directly to  the International Preliminary Examining 
Authority. 
 
66.4   Additional Opportunity for Subm itting Amendments or Arguments 
      (a) If the International Preliminary Examining Authority wishes to issue one or more additional 
written opinions, it may do so, and Rules 66.2 and 66.3 shall apply. 
      (b) On the request of the applican t, the International Preliminary Examining Authority may give 
him one or more additional opportunitie s to submit amendments or arguments. 
 
66.4
bis   Consideration of Amendments and Arguments 
 
     Amendments or arguments need not be ta ken into account by the International Preliminary 
Examining Authority for the purposes of a writte n opinion or the international preliminary 
examination report if they are received after that  Authority has begun to draw up that opinion or 
report.  
66.5   Amendment 
      Any change, other than the rectification of obvious errors 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. 
 
66.6   Informal Communications with the Applicant 
      The International Preliminary Examining Au thority may, at any time, communicate informally, 
over the telephone, in writing, or th rough personal interviews, with th e applicant. The said Authority 
shall, at its discretion, decide whether it wishes to grant more than one personal interview if so 
requested by the applicant, or whether it wishes to reply to any informal written communication from 
the applicant. 
 
66.7   Priority Document 
 
     (a) If the International Preliminary Examining Au thority needs a copy of the application whose 
priority is claimed in the international application,  the International Bureau shall, on request, promptly 
furnish such copy. If that copy is not furnished to  the International Preliminary Examining Authority 
because the applicant failed to co mply with the requirements of Rule 17.1, the international 
preliminary examination report may be established as if priority had not been claimed. 
     (b) If the application whose priority is claimed in  the international application is in a language 
other than the language or one of the languages of the International Preliminary Examining Authority, 
that Authority may invite the applicant to furnish a translation in the said language or one of the said 
languages within 2 months from the date of the invi tation. If the translation is not furnished within IP/N/1/AUS/P/6 
Page 259 
 
 
that time limit, the international preliminary exam ination report may be established as if the priority 
had not been claimed. 
 
66.8   Form of Amendments 
 
     (a) Subject to paragraph (b), the applicant shall be required to submit a replacement sheet for 
every sheet of the international application which,  on account of an amendment, differs from the sheet 
previously filed.  The letter accompanying the replacement sheets shall draw attention to the 
differences between the replaced sheets and the repl acement sheets and shall preferably also explain 
the reasons for the amendment. 
 
     (b) Where the amendment consists in the deletion of passages or in minor alte rations or additions, 
the replacement sheet referred to in paragraph (a ) may be a copy of the relevant sheet of the 
international application containing the alterations or additions, provided that the clarity and direct 
reproducibility of that sheet are not adversely affected .  To the extent that any amendment results in 
the cancellation of an entire sheet, that amendmen t shall be communicated in a letter which shall 
preferably also explain the reasons for the amendment. 
 
66.9   Language of Amendments 
      (a) Subject to paragraphs ( b) and ( c), if the international applica tion has been filed in a language 
other than the language in which it is published, an y amendment, as well as any letter referred to in 
Rule 66.8, shall be submitted in  the language of publication. 
      (b) If the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis 
of a translation of the international application,  any amendment, as well as any letter referred to in 
paragraph ( a), shall be submitted in the language of that translation. 
      (c) Subject to Rule 55.3, if an amendment or a letter is not submitted in a language as required 
under paragraph ( a) or ( b), the International Preliminary Examin ing Authority shall, if practicable 
having regard to the time limit for establishing the in ternational preliminary examination report, invite 
the applicant to furnish the amendment or letter in  the required language within a time limit which 
shall be reasonable under the circumstances. 
      (d) If the applicant fails to comply, within the time limit under paragraph ( c), with the invitation 
to furnish an amendment in the required language, the amendment shall not be taken into account for 
the purposes of the international preliminary examina tion. If the applicant fails to comply, within the 
time limit under paragraph ( c), with the invitation to furnish a letter referred to in paragraph ( a) in the 
required language, the amendment concerned need not be taken into account for the purposes of the 
international preliminary examination.  
Rule 67 
Subject Matter under Article 34 (4) (a) (i) 
 67.1   Definition 
      No International Preliminary Examining Author ity shall be required to carry out an international 
preliminary examination on an international applica tion if, and to the extent to which, its subject 
matter is any of the following: 
 (i) scientific and mathematical theories,   (ii) plant or animal varieties or essentially biological processes for the production of 
plants and animals, other than microbiol ogical processes and the products of such 
processes, IP/N/1/AUS/P/6 
Page 260  
 
  (iii) schemes, rules or methods of doing business, performing purely mental acts or 
playing games, 
  (iv) methods for treatment of the human or animal body by surgery or therapy, as well as 
diagnostic methods, 
  (v) mere presentations of information,   (vi) computer programs to the extent th at the International Preliminary Examining 
Authority is not equipped to carry out an international preliminary examination 
concerning such programs. 
 
Rule 68 
Lack of Unity of Invention (International Preliminary Examination) 
 68.1   No Invitation to Restrict or Pay 
      Where the International Preliminary Examini ng Authority finds that the requirement of unity of 
invention is not complied with and chooses not to invite  the applicant to restrict the claims or to pay 
additional fees, it shall proceed with the intern ational preliminary examination, subject to 
Article 34 (4) ( b) and Rule 66.1 ( e), in respect of the entire international application, but shall 
indicate, in any written opinion and in the intern ational preliminary examination report, that it 
considers that the requirement of unity of inventio n is not fulfilled and it shall specify the reasons 
therefor. 
 
68.2   Invitation to Restrict or Pay 
      Where the International Preliminary Examini ng Authority finds that the requirement of unity of 
invention is not complied with and c hooses to invite the applicant, at hi s option, to restrict the claims 
or to pay additional fees, it shall specify at least one possibility of restriction which, in the opinion of 
the International Preliminary Examining Authority,  would be in compliance with the applicable 
requirement, and shall specify the amount of th e additional fees and the reasons for which the 
international application is not considered as complyi ng with the requirement of unity of invention. It 
shall, at the same time, fix a time limit, with re gard to the circumstances of the case, for complying 
with the invitation; such time limit shall not be shor ter than 1 month, and it shall not be longer than 2 
months, from the date of the invitation.  
68.3   Additional Fees 
      (a) The amount of the additional fee due for in ternational preliminar y examination under 
Article 34 (3) ( a) shall be determined by the competent International Preliminary Examining 
Authority. 
 
     (b) The additional fee due for international pr eliminary examination under Article 34 (3) ( a) shall 
be payable direct to the International Preliminary Examining Authority.       (c) Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned 
statement to the effect that the international app lication complies with the requirement of unity of 
invention or that the amount of the required add itional fee is excessive. Such protest shall be 
examined by a three-member board or other spec ial instance of the International Preliminary 
Examining Authority, or any competent higher authority , which, to the extent that it finds the protest 
justified, shall order the total or partial reimburseme nt to the applicant of the additional fee. On the IP/N/1/AUS/P/6 
Page 261 
 
 
request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the intern ational preliminary examination report. 
      (d) The three-member board, special instance or competent higher authority, referred to in 
paragraph ( c), shall not comprise any person who made the decision which is the subject of the 
protest. 
      (e) Where the applicant has, under paragraph ( c), paid an additional fee under protest, the 
International Preliminary Examining Authority may, after a prior review of the justification for the 
invitation to pay an additional fee, require that the applicant pay a fee for the examination of the 
protest (“protest fee”). The protest fee shall be paid  within one month from the date of the notification 
to the applicant of the result of the review. If the protest fee is not so paid, the protest shall be 
considered withdrawn. The protest fee shall be refunded to the applicant where the three-member 
board, special instance or higher authority referred to in paragraph ( c) finds that the protest was 
entirely justified.  
68.4   Procedure in the Case of Insufficient Restriction of the Claims 
      If the applicant restricts the claims but not su fficiently to comply with the requirement of unity of 
invention, the International Preliminary Exam ining Authority shall proceed as provided in 
Article 34 (3) ( c). 
 
68.5   Main Invention 
      In case of doubt which invention is the main invention for the purposes of Article 34 (3) ( c), the 
invention first mentioned in the claims sh all be considered the main invention. 
 
Rule 69 
Start of and Time Limit for International Preliminary Examination 
 
69.1   Start of International Preliminary Examination  
 
     (a) Subject to paragraphs ( b) to ( e), the International Preliminary Examining Authority shall start 
the international preliminary examination when it is in possession both of the demand and of either 
the international search report or a notice of the de claration by the International Searching Authority 
under Article 17 (2) ( a) that no international search report will be established. 
 
     (b) If the competent International Preliminary Exam ining Authority is part of the same national 
Office or intergovernmental organization as the co mpetent International Searching Authority, the 
international preliminary examination may, if the International Preliminary Examining Authority so 
wishes and subject to paragraph ( d), start at the same time as the international search. 
      (c) Where the statement concerning amendments c ontains an indication that amendments under 
Article 19 are to be taken into account (Rule 53.9 ( a) (i)), the International Preliminary Examining 
Authority shall not start the international preliminar y examination before it has received a copy of the 
amendments concerned.       (d) Where the statement concerning amendments contains an indication that the start of the 
international preliminary examinati on is to be postponed (Rule 53.9 (
b)), the International Preliminary 
Examining Authority shall not start the inte rnational preliminary examination before 
  (i) it has received a copy of any amendments made under Article 19,  IP/N/1/AUS/P/6 
Page 262  
 
 (ii) it has received a notice from the applicant that he does not wish to make amendments 
under Article 19, or 
  (iii) the expiration of 20 months from the priority date,  
whichever occurs first. 
      (e) Where the statement concerning amendments c ontains an indication that amendments under 
Article 34 are submitted with the demand (Rule 53.9 ( c)) but no such amendments are, in fact, 
submitted, the International Preliminary Examining Authority shall not start the international 
preliminary examination before it has received the am endments or before the time limit fixed in the 
invitation referred to in Rule 60.1 ( g) has expired, whichever occurs first. 
 
69.2   Time Limit for International Preliminary Examination 
 
The time limit for establishing the internationa l preliminary examination report shall be: 
  (i) 28 months from the priority date, or   (ii) eight months from the date of payment of the fees referred to in Rules 57.1 
and 58.1 ( a), or 
 
 (iii) eight months from the date of receipt  by the International Preliminary Examining 
Authority of the translation furnished under Rule 55.2, 
 whichever expires last. 
 
Rule 70 
The International Preliminary Examination Report 
 
70.1   Definition 
 
     For the purposes of this Rule, “report” sha ll mean international preliminary examination report. 
 
70.2   Basis of the Report 
      (a) If the claims have been amended, the report shall issue on the claims as amended. 
 
     (b) If, pursuant to Rule 66.7 ( a) or ( b), the report is established as if the priority had not been 
claimed, the report shall so indicate.       (c) If the International Preliminary Examining Au thority considers that any amendment goes 
beyond the disclosure in the international application as filed, the report shall be established as if such 
amendment had not been made, and the report shall so  indicate. It shall also indicate the reasons why 
it considers that the amendment goes beyond the said disclosure.       (d) Where claims relate to inventions in respect  of which no international search report has been 
established and have therefore not been the subjec t of international preliminary examination, the 
international preliminary examination report shall so indicate. 
 
70.3   Identifications 
 IP/N/1/AUS/P/6 
Page 263 
 
 
     The report shall identify the International Pr eliminary Examining Authority which established it by 
indicating the name of such Authority, and the inte rnational application by indicating the international 
application number, the name of the app licant, and the international filing date. 
 
70.4   Dates 
 
     The report shall indicate:   (i) the date on which th e demand was submitted, and 
 
 (ii) the date of the report; that date shall be the date on which the report is completed. 
 
70.5    Classification 
      (a) The report shall repeat the classification given under Rule 43.3 if the International 
Preliminary Examining Authority agrees with such classification. 
      (b) Otherwise, the International Preliminary Exam ining Authority shall indicate in the report the 
classification, at least according to the Internationa l Patent Classification, which it considers correct. 
 
70.6   Statement under Article 35 (2) 
 
     (a) The statement referred to in Article 35 (2) sha ll consist of the words “YES” or “NO,” or their 
equivalent in the language of the report, or some  appropriate sign provided for in the Administrative 
Instructions, and shall be accompanied by the citati ons, explanations and observations, if any, referred 
to in the last sentence of Article 35 (2). 
 
     (b) If any of the three criteria referred to in Ar ticle 35 (2) (that is, novelty, inventive step (non-
obviousness), industrial applicability) is not satisfied, the statement shall be negative. If, in such a 
case, any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied. 
 
70.7   Citations under Article 35 (2) 
      (a) The report shall cite the documents considered  to be relevant for supporting the statements 
made under Article 35 (2), whether or not such documen ts are cited in the international search report.  
Documents cited in the international search report need only be cited in the report when they are 
considered by the International Prelimin ary Examining Authority to be relevant. 
      (b) The provisions of Rule 43.5 ( b) and ( e) shall apply also to the report. 
 
70.8   Explanations under Article 35 (2) 
 
     The Administrative Instructions shall cont ain guidelines for cases in which the explanations 
referred to in Article 35 (2) should or should not be  given and the form of such explanations. Such 
guidelines shall be based on the following principles:   (i) explanations shall be given whenever the statement in relation to any claim is 
negative; 
  (ii) explanations shall be given whenever  the statement is positive unless the reason for 
citing any document is easy to imagine on the basis of consultation of the cited document; 
 IP/N/1/AUS/P/6 
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 (iii) generally, explanations sh all be given if the case provided for in the last sentence of 
Rule 70.6 ( b) obtains. 
 
70.9   Non-Written Disclosures 
 
     Any non-written disclosure referred to in the re port by virtue of Rule 64.2 shall be mentioned by 
indicating its kind, the date on which the written di sclosure referring to the non-written disclosure was 
made available to the public, and the date on which the non-written disclosure occurred in public. 
 
70.10    Certain Published Documents 
 
     Any published application or any patent referre d to in the report by virtue of Rule 64.3 shall be 
mentioned as such and shall be acco mpanied by an indication of its date of publication, of its filing 
date, and its claimed priority date (if any). In resp ect of the priority date of any such document, the 
report may indicate that, in the opinion of the Inte rnational Preliminary Examining Authority, such 
date has not been validly claimed. 
 
70.11    Mention of Amendments 
      If, before the International Preliminary Exam ining Authority, amendments have been made, this 
fact shall be indicated in the report. Where a ny amendment has resulted in the cancellation of an 
entire sheet, this fact shall also  be specified in the report. 
 
70.12    Mention of Certain Defects and Other Matters 
      If the International Preliminary Examining Authority considers that, at the time it prepares the 
report: 
  (i) the international application contains  any of the defects referred to in Rule 
66.2 ( a) (iii), it shall include this opinion a nd the reasons therefor in the report; 
  (ii) the international application calls for any of the observations referred to in 
Rule 66.2 ( a) (v), it may include this opinion in the report and, if it does, it shall also 
indicate in the report the reasons for such opinion, 
  (iii) any of the situations referred to in Artic le 34 (4) exists, it shall state this opinion and 
the reasons therefor in the report; 
 
 (iv) a nucleotide and/or amino acid sequence lis ting is not available to it in such a form 
that a meaningful international preliminary examination can be carried out, it shall so 
state in the report. 
 
70.13    Remarks Concerning Unity of Invention 
 
     If the applicant paid additional fees for the international preliminary examination, or if the 
international application or the internationa l preliminary examination was restricted under 
Article 34 (3), the report shall so indicate. Fu rthermore, where the international preliminary 
examination was carried out on restricted claims (Article 34 (3) ( a)), or on the main invention only 
(Article 34 (3) ( c)), the report shall indicate what parts of th e international application were and what 
parts were not the subject of international prelim inary examination. The re port shall contain the 
indications provided for in Rule 68.1, where the In ternational Preliminary Ex amining Authority chose 
not to invite the applicant to restrict  the claims or to pay additional fees. 
 
70.14    Authorized Officer IP/N/1/AUS/P/6 
Page 265 
 
 
      The report shall indicate the name of the officer of the International Preliminary Examining 
Authority responsible for that report. 
 
70.15    Form 
 
     The physical requirements as to the form of the report shall be prescribed by the Administrative 
Instructions. 
 
70.16    Annexes  to the Report 
 
     Each replacement sheet under Rule 66.8 ( a) or ( b), each replacement sheet containing amendments 
under Article 19 and each replacement sheet containi ng rectifications of obvious errors authorized 
under Rule 91.1 ( e) (iii) 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 re port.  Amendments under 
Article 19 which have been considered as rever sed by an amendment under Article 34 and letters 
under Rule 66.8 shall not be annexed. 
 
70.17    Languages of the Report and the Annexes 
      The report and any annex shall be in the langua ge in which the international application to which 
they relate is published, or, if the international preliminary examination is carried out, pursuant to 
Rule 55.2, on the basis of a translation of the in ternational application, in the language of that 
translation.  
Rule 71 
Transmittal of the International Preliminary Examination Report 
 
71.1   Recipients 
      The International Preliminary Examining Author ity shall, on the same day, transmit one copy of 
the international preliminary examination report and its  annexes, if any, to the International Bureau, 
and one copy to the applicant. 
 
71.2   Copies of Cited Documents 
      (a) The request under Article 36 (4) may be presented any time during 7 years from the 
international filing date of the internationa l application to which the report relates. 
      (b) The International Preliminary Examining Authority may require that the party (applicant or 
elected Office) presenting the request pay to it the co st of preparing and mailing the copies. The level 
of the cost of preparing copies shall be provided fo r in the agreements referred to in Article 32 (2) 
between the International Preliminary Examin ing Authorities and the International Bureau. 
 
     (d) Any International Preliminary Examining Aut hority may perform the obligations referred to 
in paragraphs ( a) and ( b) through another agency responsible to it.  
 
Rule 72 
Translation of the International Preliminary Examination Report 
 
72.1   Languages 
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     (a) Any elected State may require that the in ternational preliminary examination report, 
established in any language other than the official language, or one of the official languages, of its 
national Office, be translated into English.       (b) Any such requirement shall be notified to th e International Bureau, which shall promptly 
publish it in the Gazette. 
 
72.2   Copy of Translation for the Applicant 
      The International Bureau shall transmit a c opy of the translation referred to in Rule 72.1 ( a) of the 
international preliminary examination report to the applicant at the same time as it communicates such 
translation to the interested elected Office or Offices. 
 
72.3   Observations on the Translation 
 
     The applicant may make written observations on what, in his opinion, are errors of translation in 
the translation of the international preliminary ex amination report and shall send a copy of any such 
observations to each of the interested elected O ffices and a copy to th e International Bureau.  
 
Rule 73 
Communication of the International Preliminary Examination Report 
 73.1   Preparation of Copies 
      The International Bureau shall prepare th e copies of the documents to be communicated under 
Article 36 (3) ( a). 
 
73.2   Time Limit for Communication 
      The communication provided for in Article 36 (3) ( a) shall be effected as promptly as possible but 
not earlier than the communication under Article 20.  
Rule 74 
Translations of Annexes of the Internat ional Preliminary Examination Report 
and Transmittal Thereof 
 
74.1   Contents of Translation and Time Limit for Transmittal Thereof 
 
     (a) Where the furnishing of a translation of the inte rnational application is required by the elected 
Office under Article 39 (1), the applicant shall, w ithin the time limit applicable under Article 39 (1), 
transmit a translation of any replacement sheet re ferred to in Rule 70.16 which is annexed to the 
international preliminary examination report, unless such sheet is in the language of the required 
translation of the international application. The same time limit shall apply where the furnishing of a 
translation of the international a pplication to the elected Office must, because of a declaration made 
under Article 64 (2) ( a) (i), be effected within the time limit applicable under Article 22. 
      (b) Where the furnishing under Article 39 (1) of a tr anslation of the international application is 
not required by the elected Office, that Office may require the applicant to furnish, within the time 
limit applicable under that Article, a translati on into the language in which the international 
application was published of any replacement sheet re ferred to in Rule 70.16 which is annexed to the 
international preliminary examina tion and is not in that language. 
 
Rule 76 
Copy, Translation and Fee under Article 39 (1 ); Translation of Priority Document IP/N/1/AUS/P/6 
Page 267 
 
 
 
76.4   Time Limit for Translation of Priority Document  
      The applicant shall not be required to furnis h to any elected Office a translation of the priority 
document before the expiration of the applicable time limit under Article 39. 
 
76.5   Application of Rules 22.1 (g), 49 and 51
bis  
 
Rules 22.1 ( g), 49 and 51bis shall apply, provided that: 
 
 (i) any reference in the said Rules to the designated Office or to the designated State 
shall be construed as a reference to the elected Office or to the elected State, 
respectively; 
 
 (ii) any reference in the said Rules to Artic le 22 or Article 24 (2) shall be construed as a 
reference to Article 39 (1) or Article 39 (3), respectively; 
  (iii) the words “international applications filed” in Rule 49.1 ( c) shall be replaced by the 
words “a demand submitted”;  
 
 (iv) for the purposes of Article 39 (1), wher e an international preliminary examination 
report has been established, a translation of any amendment under Article 19 shall only be required if that amendmen t is annexed to that report. 
 
76.6   Transitional Provision 
 
     If, on July 12, 1991, Rule 76.5 (iv) is not co mpatible with the national law applied by the elected 
Office in respect of claims amended under Article 19, Rule 76.5 (iv) shall not apply in that respect to that elected Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by December 31, 1991. The information received 
shall be promptly published by the International Bureau in the Gazette. 
 
Rule 77 
Faculty under Article 39 (1) (b) 
 
77.1   Exercise of Faculty 
 
     (a) Any Contracting State allowing a time limit expiring later than the time limit provided for in 
Article 39 (1) ( a) shall notify the International Bureau of the time limit so fixed. 
      (b) Any notification received by the In ternational Bureau under paragraph ( a) shall be promptly 
published by the International Bureau in the Gazette. 
     (c) Notifications concerning the shortening of the prev iously fixed time limit shall be effective in 
relation to demands submitted after the expiration of 3 months computed from the date on which the 
notification was published by the International Bureau.       (d) Notifications concerning the lengthening of the previously fixed time limit shall become 
effective upon publication by the International Bureau in the Gazette in respect of demands pending at 
the time or submitted after the date of such publica tion, or, if the Contracting State effecting the 
notification fixes some later date, as from the latter date.  
Rule 78 
Amendment of the Claims, the Description,  and the Drawings, before Elected Offices IP/N/1/AUS/P/6 
Page 268  
 
 
78.1   Time Limit Where Election Is Effected prior to Expiration of 19 Months  from Priority Date 
      (a) Where the election of any Contracting State is  effected prior to the expiration of the 19th 
month from the priority date, the applicant shall, if he so wishes, exercise the right under Article 41 to 
amend the claims, the description and the drawings, before the elected Office concerned within one 
month from the fulfilment of the requirements under Article 39 (1) ( a), provided that, if the 
transmittal of the international preliminary examin ation report under Article 36 (1) has not taken place 
by the expiration of the time limit applicable under Ar ticle 39, he shall exercise the said right not later 
than four months after such expiration date. In eith er case, the applicant may exercise the said right at 
any other time if so permitted by the national law of the said State. 
      (b) In any elected State in which the national law provides that ex amination starts only on special 
request, the national law may provide that the time li mit within or the time at which the applicant may 
exercise the right under Article 41 shall, where the el ection of any Contracting State is effected prior 
to the expiration of the 19th month from the priority date, be the same as that provided by the national 
law for the filing of amendments in the case of the examination, on special request, of national 
applications, provided that such time limit shall not  expire prior to, or such time shall not come 
before, the expiration of the time limit applicable under paragraph ( a). 
 
78.2   Time Limit Where Election Is Effected Aft er Expiration of 19 Months from Priority Date 
 
     Where the election of any Contracting State has been effected after the expiration of the 19th month from the priority date and the applicant wish es to make amendments under Article 41, the time 
limit for making amendments under Article 28 shall apply. 
 
78.3   Utility Models 
      The provisions of Rules 6.5 and 13.5 shall apply, mutatis  mutandis , before elected Offices. If the 
election was made before the expiration of the 19th month from the priority date, the reference to the 
time limit applicable under Article 22 is replaced by a reference to the time limit applicable under 
Article 39. 
 IP/N/1/AUS/P/6 
Page 269 
 
 
PART D 
Rules Concerning Chapter III of the Treaty 
 
Rule 79 
Calendar 
 79.1   Expressing Dates 
      Applicants, national Offices, receiving Offices, International Searching and Preliminary 
Examining Authorities, and the International Bur eau, shall, for the purposes of the Treaty and the 
Regulations, express any date in terms of the Christia n era and the Gregorian calendar, or, if they use 
other eras and calendars, they shall also express an y date in terms of the Christian era and the 
Gregorian calendar.  
Rule 80 
Computation of Time Limits 
 
80.1   Periods Expressed in Years 
      When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occu rred, and the period shall expire in the relevant 
subsequent year in the month having the same na me and on the day having the same number as the 
month and the day on which the said event occurred provided that if the relevant subsequent month 
has no day with the same number the period shall expire on the last day of that month. 
 
80.2   Periods Expressed in Months 
 
     When a period is expressed as one month or a certain number of months, computation shall start on 
the day following the day on which the relevant even t occurred, and the period shall expire in the 
relevant subsequent month on the day which has th e same number as the day on which the said event 
occurred, provided that if the relevant subsequent  month has no day with the same number the period 
shall expire on the last day of that month.  
80.3   Periods Expressed in Days 
      When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occu rred, and the period shall expire on the day on 
which the last day of the count has been reached. 
 
80.4   Local Dates 
      (a) The date which is taken into consideration as the starting date of the computation of any 
period shall be the date which prevails in the loca lity at the time when the relevant event occurred. 
 
     (b) The date on which any period expires shall be th e date which prevails in the locality in which 
the required document must be filed or the required fee must be paid. 
 
80.5   Expiration on a Non-Working Day 
 
     If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day on whic h such Office or organization is not open to the 
public for the purposes of the transaction of offici al business, or on which ordinary mail is not 
delivered in the locality in which such Office or or ganization is situated, the period shall expire on the 
next subsequent day on which neither of the said two circumstances exists. IP/N/1/AUS/P/6 
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80.6   Date of Documents 
      Where a period starts on the day of the da te of a document or lette r emanating from a national 
Office or intergovernmental organization, any inte rested party may prove that the said document or 
letter was mailed on a day later than the date it bears,  in which case the date of actual mailing shall, 
for the purposes of computing the period, be consider ed to be the date on which the period starts. 
Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the 
national Office or intergovernmental organizati on evidence which satisfies the national Office or 
intergovernmental organization that the document or  letter was received more than 7 days after the 
date it bears, the national Office or intergovernment al organization shall treat the period starting from 
the date of the document or letter as expiring later by  an additional number of days which is equal to 
the number of days which the document or letter was r eceived later than 7 days after the date it bears. 
 
80.7   End of Working Day 
 
     (a) A period expiring on a given day shall expi re at the moment the national Office or 
intergovernmental organization with which the documen t must be filed or to which the fee must be 
paid closes for business on that day.       (b) Any Office or organization may depart  from the provisions of paragraph ( a) up to midnight 
on the relevant day. 
 
Rule 81 
Modification of Time Limits Fixed in the Treaty 
 
81.1   Proposal 
      (a) Any Contracting State or the Director General may propose a modification under 
Article 47 (2).       (b) Proposals made by a Contracting State sha ll be presented to the Director General. 
 
81.2   Decision by the Assembly 
      (a) When the proposal is made to the Assembly, its text shall be sent by the Director General to 
all Contracting States at least 2 months in advance of that session of the Assembly whose agenda 
includes the proposal. 
      (b) During the discussion of the proposal in the Assembly, the proposal may be amended or 
consequential amendments proposed.       (c) The proposal shall be considered adopted if none  of the Contracting States present at the time 
of voting votes against the proposal. 
 
81.3   Voting by Correspondence 
      (a) When voting by correspondence is chosen, the proposal shall be included in a written 
communication from the Director General to the Contracting States, inviting them to express their 
vote in writing.       (b) The invitation shall fix the time limit within  which the reply contai ning the vote expressed in 
writing must reach the International Bureau. That ti me limit shall not be less than 3 months from the 
date of the invitation. IP/N/1/AUS/P/6 
Page 271 
 
 
      (c) Replies must be either positiv e or negative. Proposals for amendments or mere observations 
shall not be regarded as votes.       (d) The proposal shall be considered adopted if none of the Contracting States opposes the 
amendment and if at least one-half of the Contracti ng States express either approval or indifference or 
abstention.  
 
Rule 82 
Irregularities in the Mail Service 
 82.1   Delay or Loss in Mail 
      (a) Any interested party may offer evidence that he has mailed the document or letter 5 days prior 
to the expiration of the time limit. Except in  cases where surface mail normally arrives at its 
destination within 2 days of mailing, or where no airmail service is available, such evidence may be 
offered only if the mailing was by airmail. In an y case, evidence may be offered only if the mailing 
was by mail registered by the postal authorities.       (b) If the mailing, in accordance with paragraph ( a), of a document or letter is proven to the 
satisfaction of the national Office or intergovernme ntal organization which is the addressee, delay in 
arrival shall be excused, or, if the document or letter  is lost in the mail, substitution for it of a new 
copy shall be permitted, provided that the interested  party proves to the satisfaction of the said Office 
or organization that the document or letter offered in substitution is identical with the document or 
letter lost.  
     (c) In the cases provided for in paragraph ( b), evidence of mailing within the prescribed time 
limit, and, where the document or letter was lost , the substitute document or letter as well as the 
evidence concerning its identity with the document or  letter lost, shall be submitted within 1 month 
after the date on which the interested party no ticed—or with due diligence should have noticed—the 
delay or loss, and in no case later than 6 months afte r the expiration of the time limit applicable in the 
given case. 
 
     (d) Any national Office or intergovernmental orga nization which has notified the International 
Bureau that it will do so shall, where a delivery servi ce other than the postal authorities is used to mail 
a document or letter, apply the provisions of paragraphs ( a) to ( c) as if the delivery service was a 
postal authority. In such a case, the last sentence of paragraph ( a) shall not apply but evidence may be 
offered only if details of the mailing were recorded  by the delivery service at the time of mailing. The 
notification may contain an indication that it app lies only to mailings using specified delivery services 
or delivery services which satisfy specified criteri a. The International Bureau shall publish the 
information so notified in the Gazette.       (e) Any national Office or intergovernmental organization may proceed under paragraph ( d): 
 
 (i) even if, where applicable, the delivery ser vice used was not one of those specified, or 
did not satisfy the criteria specified, in th e relevant notification under paragraph ( d), 
or 
 
 (ii) even if that Office or organization has not sent to the International Bureau a 
notification under paragraph ( d). 
 
82.2   Interruption in the Mail Service 
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     (a) Any interested party may offer evidence that on any of the 10 days preceding the day of 
expiration of the time limit the postal service was interrupted on account of war, revolution, civil 
disorder, strike, natural calamity, or other like reason,  in the locality where the interested party resides 
or has his place of business or is staying.  
     (b) If such circumstances are proven to th e satisfaction of the national Office or 
intergovernmental organization which is the addressee,  delay in arrival shall be excused, provided that 
the interested party proves to the satisfaction of the said Office or organization that he effected the mailing within 5 days after the mail service w as resumed. The provisions of Rule 82.1 ( c) shall apply 
mutatis  mutandis . 
 
Rule 82
bis. 
Excuse by the Designated or Elected State of Delays in Meeting Certain Time 
Limits 
 
82bis.1   Meaning of “Time Limit” in Article 48 (2) 
      The reference to “any time limit” in Article  48 (2) shall be construed as comprising a reference: 
  (i) to any time limit fixed in the Treaty or these Regulations; 
 
 (ii) to any time limit fixed by the receiving O ffice, the International Searching Authority, 
the International Preliminary Examining Au thority or the International Bureau or 
applicable by the receiving Office under its national law; 
 
 (iii) to any time limit fixed by, or in the national law applicable by, the designated or 
elected Office, for the performance of any act  by the applicant before that Office. 
 
82
bis.2   Reinstatement of Rights and Other Provisions to which Article 48 (2) Applies 
 
     The provisions of the national law which is referred to in Article 48 (2) concerning the excusing, 
by the designated or elected State, of any delay in meeting any time limit are those provisions which 
provide for reinstatement of rights, restoration, restitutio  in integrum  or further processing in spite of 
non-compliance with a time limit, and any other prov ision providing for the extension of time limits 
or for excusing delays in meeting time limits. 
 
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  
 
     If the applicant proves to the satisfaction of an y designated or elected Office that the international 
filing date is incorrect due to an error made by the receiving Office or that the priority claim has been 
erroneously considered by the receiving Office or th e International Bureau not to have been made, 
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 na tional practice, the said Office shall rectify the 
error and shall treat the international application as if it had been accorded the rectified international 
filing date or as if the priority claim had not  been considered not to have been made. 
 
Rule 83 
Right to Practice before International Authorities 
 
83.1   Proof of Right IP/N/1/AUS/P/6 
Page 273 
 
 
      The International Bureau, the competent International Search ing Authority, and the competent 
International Preliminary Examining Authority, ma y require the production of proof of the right to 
practice referred to in Article 49. 
 
83.1
bis   Where the International Bureau Is the Receiving Office 
      (a) Any person who has the right to practice befo re the national Office of, or acting for, a 
Contracting State of which the applicant or, if there are two or more applicants, any of the applicants 
is a resident or national shall be entitled to practi ce in respect of the international application before 
the International Bureau in its capacity as receiving Office under Rule 19.1 ( a) (iii). 
      (b) Any person having the right to practice before the International Bureau  in its capacity as 
receiving Office in respect of an international applicat ion shall be entitled to practice in respect of that 
application before the International Bureau in  any other capacity and before the competent 
International Searching Authority and competent International Preliminary Examining Authority. 
 83.2   Information 
      (a) The national Office or the intergovernmental organization which the interested person is 
alleged to have a right to practice before shall,  upon request, inform the International Bureau, the 
competent International Searching Authority, or the competent International Preliminary Examining 
Authority, whether such person has the right to practice before it.       (b) Such information shall be binding upon the In ternational Bureau, the International Searching 
Authority, or the International Prelimin ary Examining Authority, as the case may be. 
 
PART E 
Rules Concerning Chapter V of the Treaty 
 
Rule 84 
Expenses of Delegations 
 
84.1   Expenses Borne by Governments 
      The expenses of each Delegation participati ng in any organ established by or under the Treaty 
shall be borne by the Government which has appointed it. 
 
Rule 85 
Absence of Quorum in the Assembly 
 
85.1   Voting by Correspondence 
 
     In the case provided for in Article 53 (5) ( b), the International Bur eau shall communicate the 
decisions of the Assembly (other than those c oncerning the Assembly’s own procedure) to the 
Contracting States which were not represented and sh all invite them to express in writing their vote or 
abstention within a period of 3 months from the date of the communication. If, at the expiration of 
that period, the number of Contracting States having thus expressed their vote or abstention attains the 
number of Contracting States which was lacking for attaining the quorum in the session itself, such decisions shall take effect provided that at th e same time the required majority still obtains.  
 
Rule 86 
The Gazette IP/N/1/AUS/P/6 
Page 274  
 
 
86.1   Contents and Form 
      (a) The Gazette referred to in Article 55 (4) shall contain: 
 
 (i) for each published international applicati on, the data specified by the Administrative 
Instructions taken from the front page of  the pamphlet published under Rule 48, the 
drawing (if any) appearing on the said front page, and the abstract, 
  (ii) the schedule of all fees payable to the receiving Offices, the International Bureau, and 
the International Searching and Preliminary Examining Authorities, 
  (iii) notices the publication of which is required under the Treaty or these Regulations, 
  (iv) information, if and to the extent furnished to the International Bureau by the 
designated or elected Offices, on the question whether the requirements provided for 
in Articles 22 or 39 have been complied with in respect of the international applications designating or electing the Office concerned, 
  (v) any other useful information prescribed by the Administrative Instructions, provided 
access to such information is not prohib ited under the Treaty or these Regulations. 
 
     (b) The information referred to in paragraph ( a) shall be made available in two forms: 
  (i) as a Gazette in paper form, which shall contain the data specified by the 
Administrative Instructions taken from th e front page of the pamphlet published 
under Rule 48 (‘bibliographic data’) and th e matters referred to in paragraph ( a) (ii) 
to (v); 
  (ii) as a Gazette in electronic form, whic h shall contain the bibliographic data, the 
drawing (if any) appearing on the said front page, and the abstract. 
 
86.2   Languages;  Access to the Gazette 
      (a) The Gazette in paper form shall be publishe d in a bilingual (English and French) edition. It 
shall also be published in editions in any other la nguage, provided the cost of publication is assured 
through sales or subventions. 
 
     (b) The Assembly may order the publication of the Gazette in languages other than those referred 
to in paragraph ( a). 
      (c) The Gazette in electronic form referred to in Rule 86.1 ( b) (ii) shall be made accessible, in 
English and French at the same time, by an y electronic ways and means specified in the 
Administrative Instructions. The translations shall be  ensured by the Interna tional Bureau in English 
and French. The International Bureau shall ensu re that the making accessible of the Gazette in 
electronic form shall be effected on, or as soon as  possible after, the date of publication of the 
pamphlet containing the international application. 
 
86.3   Frequency 
      The frequency of publica tion of the Gazette shall be determined by the Director General. 
 
86.4   Sale 
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     The subscription and other sale prices of the G azette shall be determined by the Director General. 
 
86.5   Title 
      The title of the Gazette shall be determined by the Director General.  
86.6   Further Details 
      Further details concerning the Gazette may be  provided for in the Ad ministrative Instructions.  
 
Rule 87 
Copies of Publications 
 
87.1   International Searching and Preliminary Examining Authorities 
 
     Any International Searching or Preliminary Examining Authority shall have the right to receive, 
free of charge, two copies of every published inte rnational application, of the Gazette, and of any 
other publication of general inter est published by the International Bureau in connection with the 
Treaty or these Regulations. 
 
87.2   National Offices 
 
     (a) Any national Office shall have the right to  receive, free of charge, one copy of every 
published international application,  of the Gazette, and of any othe r publication of general interest 
published by the International Bureau in c onnection with the Treaty or these Regulations. 
 
     (b) The publications referred to in paragraph ( a) shall be sent on special request. If any 
publication is available in more than one language, the request sha ll specify the language or languages 
in which it is desired.  
Rule 88 
Amendment of the Regulations 
 88.1   Requirement of Unanimity 
      Amendment of the following provisions of th ese Regulations shall require that no State having the 
right to vote in the Assembly vote against the proposed amendment: 
 
 (i) Rule 14.1 (Transmittal Fee),   (iii) Rule 22.3 (Time Limit Under Article 12 (3)),   (iv) Rule 33 (Relevant Prior Art for International Search), 
 
 (v) Rule 64 (Prior Art for International Preliminary Examination),   (vi) Rule 81 (Modification of Time Limits Fixed in the Treaty),  
 (vii) the present paragraph (i. e., Rule 88.1). 
 
88.3   Requirement of Absence of Opposition by Certain States 
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     Amendment of the following provisions of these Regulations shall require that no State referred to 
in Article 58 (3) ( a) (ii) and having the right to vote in the Assembly vote against the proposed 
amendment:   (i) Rule 34 (Minimum Documentation), 
 
 (ii) Rule 39 (Subject Matter Under Article 17 (2) ( a) (i)), 
  (iii) Rule 67 (Subject Matter Under Article 34 (4) ( a) (i)), 
 
 (iv) the present paragraph (i. e., Rule 88.3). 
 
88.4   Procedure 
      Any proposal for amending a provision referred to in Rules 88.1 or 88.3 shall, if the proposal is to 
be decided upon in the Assembly, be communicated to all Contracting States at least 2 months prior to 
the opening of that session of the Assembly which is called upon to make a decision on the proposal. 
 
Rule 89 
Administrative Instructions 
 
89.1   Scope 
      (a) The Administrative Instructi ons shall contain provisions: 
  (i) concerning matters in respect of whic h these Regulations expressly refer to such 
Instructions, 
  (ii) concerning any details in respect of the application of these Regulations. 
      (b) The Administrative Instructions shall not be in conflict with the provisions of the Treaty, 
these Regulations, or any agreement concluded by th e International Bureau with an International 
Searching Authority, or an International Preliminary Examining Authority. 
 
89.2   Source 
      (a) The Administrative Instructions shall be draw n up and promulgated by the Director General 
after consultation with the receiving Offices and the International Searching and Preliminary 
Examining Authorities.       (b) They may be modified by the Director Ge neral after consultation with the Offices or 
Authorities which have a direct interest in the proposed modification.  
     (c) The Assembly may invite the Director General to modify the Administrative Instructions, and 
the Director General shall proceed accordingly. 
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89.3   Publication and Entry Into Force 
      (a) The Administrative Instructions and any modi fication thereof shall be published in the 
Gazette.  
     (b) Each publication shall specify the date on wh ich the published provisions come into effect. 
The dates may be different for different provisi ons, provided that no provision may be declared 
effective prior to its publication in the Gazette.  
PART F 
Rules Concerning Several Chapters of the Treaty  
 
Rule 89
bis 
Filing, Processing and Transmission of Interna tional Applications and Other Documents in 
Electronic Form or by Electronic Means 
 
89bis.1  International Applications 
      (a) International applications may, subject to paragraphs (b) to (e), be filed and processed in 
electronic form or by electronic means, in accordan ce with the Administrative Instructions, provided 
that any receiving Office shall permit the fili ng of international applications on paper. 
 
     (b) These Regulations shall apply mutatis mutandis  to international applications filed in 
electronic form or by electronic means, subject to any special provisions of the Administrative 
Instructions.  
     (c) The Administrative Instructions shall set out the provisions and requir ements in relation to the 
filing and processing of international a pplications filed, in whole or in  part, in electronic form or by 
electronic means, including but not limited to , provisions and requirements in relation to 
acknowledgment of receipt, procedures relating to the according of an international filing date, 
physical requirements and the consequences of non-co mpliance with those requirements, signature of 
documents, means of authentication of documents a nd of the identity of parties communicating with 
Offices and authorities, and the operation of Article  12 in relation to the hom e copy, the record copy 
and the search copy, and may contain different provisi ons and requirements in relation to international 
applications filed in different languages.       (d) No national Office or intergovernmental organization shall be obliged to receive or process 
international applications filed in electronic form  or by electronic means unless it has notified the 
International Bureau that it is prepared to do so in compliance with the applicable provisions of the 
Administrative Instructions. The International Bureau  shall publish the information so notified in the 
Gazette.       (e) No receiving Office which has given the International Bureau a notification under 
paragraph (d) may refuse to process an internati onal application filed in electronic form or by 
electronic means which complies with the app licable requirements under the Administrative 
Instructions.  89
bis.2 Other Documents 
 
     Rule 89bis.1 shall apply mutatis mutandis  to other documents and correspondence relating to 
international applications.  IP/N/1/AUS/P/6 
Page 278  
 
89
bis.3 Transmittal Between Offices 
      Where the Treaty, these Regulations or the Administrative Instructions provide for documents, 
notifications, communications or correspondence to be transmitted by one national Office or 
intergovernmental organization to another, such tr ansmittal may, where so agreed by both the sender 
and the receiver, be effected in electronic form or by electronic means. 
 
Rule 89
ter. 
Copies in Electronic Form of Documents Filed on Paper 
 
89ter.1   Copies in Electronic Form of Documents Filed on Paper 
      Any national Office or intergovernmental or ganization may provide that, where an international 
application or other document relating to an interna tional application is filed on paper, a copy thereof 
in electronic form, in accordance with the Admini strative Instructions, may be furnished by the 
applicant. 
 
Rule 90 
Agents and Common Representatives 
 
90.1   Appointment as Agent 
 
     (a) A person having the right to practice before th e national Office with which the international 
application is filed or, where the international a pplication is filed with the International Bureau, 
having the right to practice in respect of the intern ational application before the International Bureau 
as receiving Office may be appointed by the appl icant as his agent to represent him before the 
receiving Office, the International Bureau, the Intern ational Searching Authority and the International 
Preliminary Examining Authority.       (b) A person having the right to practice before  the national Office or intergovernmental 
organization which acts as the International Searchi ng Authority may be appointed by the applicant as 
his agent to represent him specifi cally before that Authority. 
 
     (c) A person having the right to practice before  the national Office or intergovernmental 
organization which acts as the International Prelim inary Examining Authority may be appointed by 
the applicant as his agent to represent hi m specifically before that Authority. 
 
     (d) An agent appointed under paragraph ( a) may, unless otherwise indicated in the document 
appointing him, appoint one or more sub-agents to represent the applicant as the applicant’s agent: 
  (i) before the receiving Office, the Intern ational Bureau, the In ternational Searching 
Authority and the International Preliminar y Examining Authority, provided that any 
person so appointed as sub-agent has the right to practice before the national Office 
with which the international application w as filed or to practice in respect of the 
international application before the Intern ational Bureau as receiving Office, as the 
case may be; 
  (ii) specifically before the International Searching Authority or the International 
Preliminary Examining Authority, provided that any person so appointed as sub-agent 
has the right to practice before the nationa l Office or intergovernmental organization 
which acts as the International Searching Authority or International Preliminary Examining Authority, as the case may be. 
 
90.2   Common Representative IP/N/1/AUS/P/6 
Page 279 
 
 
      (a) Where there are two or more applicants and the applicants have not appointed an agent 
representing all of them (“a common agent”) under Rule 90.1 ( a), one of the applicants who is entitled 
to file an international application according to Artic le 9 may be appointed by the other applicants as 
their common representative. 
 
     (b) Where there are two or more applicants and a ll the applicants have not appointed a common 
agent under Rule 90.1 ( a) or a common representative under paragraph ( a), the applicant first named 
in the request who is entitled according to Rule 19. 1 to file an international application with the 
receiving Office shall be considered to be th e common representative of all the applicants. 
 
90.3   Effects of Acts by or in Relatio n to Agents and Common Representatives 
      (a) Any act by or in relation to an agent shall have  the effect of an act by or in relation to the 
applicant or applicants concerned. 
 
     (b) If there are two or more agents representing the same applicant or applicants, any act by or in 
relation to any of those agents shall have the effect of an act by or in relation to the said applicant or 
applicants.  
     (c) Subject to Rule 90 bis.5 (a), second sentence, any act by or in relation to a common 
representative or his agent shall have the effect of an act by or in relation to all the applicants. 
 
90.4   Manner of Appointment of Agent or Common Representative 
      (a) The appointment of an agent shall be effect ed by the applicant signing the request, the 
demand or a separate power of attorney. Where there are two or more applicants, the appointment of a 
common agent or common representative shall be e ffected by each applicant signing, at his choice, 
the request, the demand or a separate power of attorney.       (b) Subject to Rule 90.5, a separate power of attorn ey shall be submitted to either the receiving 
Office or the International Bureau, provided that, wh ere a power of attorney appoints an agent under 
Rule 90.1 ( b), (c) or ( d) (ii), it shall be submitted to the International Searching Authority or the 
International Preliminary Examining Authority, as the case may be.       (c) If the separate power of attorney is not signed, or if the required separate power of attorney is 
missing, or if the indication of the name or a ddress of the appointed person does not comply with 
Rule 4.4, the power of attorney shall be consid ered non-existent unless the defect is corrected. 
 
90.5   General Power of Attorney 
      (a) Appointment of an agent in relation to a partic ular international application may be effected 
by referring in the request, the demand or a separate  notice to an existing separate power of attorney 
appointing that agent to represent the applicant in relation to any international application which may 
be filed by that applicant (i.e., a “gen eral power of attorney”), provided that: 
  (i) the general power of attorney has b een deposited in accordance with paragraph (
b), 
and 
 
 (ii) a copy of it is attached to the requ est, the demand or the separate notice, as the case 
may be; that copy need not be signed. 
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     (b) The general power of attorney shall be de posited with the receiving Office, provided that, 
where it appoints an agent under Rule 90.1 ( b), (c) or ( d) (ii), it shall be deposited with the 
International Searching Authority or the Interna tional Preliminary Examining Authority, as the case 
may be. 
 
90.6   Revocation and Renunciation 
      (a) Any appointment of an agent or common repr esentative may be revoked by the persons who 
made the appointment or by their successors in title, in which case any appointment of a sub-agent 
under Rule 90.1 ( d) by that agent shall also be considered  as revoked. Any appointment of a sub-agent 
under Rule 90.1 ( d) may also be revoked by the applicant concerned. 
      (b) The appointment of an agent under Rule 90.1 ( a) shall, unless otherwise indicated, have the 
effect of revoking any earlier appointment of an agent made under that Rule.  
     (c) The appointment of a common representative shall, unless otherwise indicated, have the 
effect of revoking any earlier appointment of a common representative.       (d) An agent or a common representative may renounce his appointment by a notification signed 
by him.  
     (e) Rule 90.4 ( b) and ( c) shall apply, mutatis  mutandis , to a document containing a revocation or 
renunciation under this Rule. 
 
Rule 90
bis 
Withdrawals 
 
90bis.1   Withdrawal of the International Application 
      (a) The applicant may withdraw the international a pplication at any time prior to the expiration 
of 20 months from the priority date or, where Artic le 39 (1) applies, prior to the expiration of 30 
months from the priority date. 
 
     (b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, 
to the International Bureau, to the receiving O ffice or, where Article 39 (1) applies, to the 
International Preliminary Examining Authority.  
     (c) No international publication of the international application shall be effected if the notice of 
withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the Interna tional Bureau before the technical preparations 
for international publicatio n have been completed. 
 
90
bis.2   Withdrawal of Designations 
 
     (a) The applicant may withdraw the designation of any designated State at any time prior to the 
expiration of 20 months from the priority date or, wher e Article 39 (1) applies in respect of that State, 
prior to the expiration of 30 months from the prior ity date. Withdrawal of the designation of a State 
which has been elected shall entail withdrawal of the corresponding election under Rule 90bis.4. 
      (b) Where a State has been designated for the purpose of obtaining both a national patent and a 
regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only 
the designation for the purpose of obtaining a national patent, except where otherwise indicated. 
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Page 281 
 
 
     (c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the 
international application under Rule 90bis.1. 
      (d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, 
to the International Bureau, to the receiving O ffice or, where Article 39 (1) applies, to the 
International Preliminary Examining Authority.       (e) No international publication of the designation shall be effected if the notice of withdrawal 
sent by the applicant or transmitted by the receiving Office or the International Preliminary 
Examining Authority reaches the International Bu reau before the technical preparations for 
international publication have been completed. 
 
90
bis.3   Withdrawal of Priority Claims 
 
     (a) The applicant may withdraw a priority claim,  made in the international application under 
Article 8 (1), at any time prior to the expirati on of 20 months from the priority date or, where 
Article 39 (1) applies, 30 months from the priority date.       (b) Where the international application contains mo re than one priority claim, the applicant may 
exercise the right provided for in paragraph ( a) in respect of one or more or all of the priority claims. 
 
     (c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, 
to the International Bureau, to the receiving O ffice or, where Article 39 (1) applies, to the 
International Preliminary Examining Authority.  
     (d) Where the withdrawal of a priority claim caus es a change in the priority date, any time limit 
which is computed from the original priority date and which has not already expired shall, subject to 
paragraph ( e), be computed from the priority date resulting from that change. 
      (e) In the case of the time limit referred to in Article 21 (2) ( a), the International Bureau may 
nevertheless proceed with the international publicatio n on the basis of the said time limit as computed 
from the original priority date if the notice of w ithdrawal sent by the applicant or transmitted by the 
receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication. 
 
90
bis.4   Withdrawal of the Demand, or of Elections 
 
     (a) The applicant may withdraw the demand or an y or all elections at any time prior to the 
expiration of 30 months from the priority date.       (b) Withdrawal shall be effective upon receipt of  a notice addressed by the applicant to the 
International Bureau. 
      (c) If the notice of withdrawal is submitted by the applicant to the In ternational Preliminary 
Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it 
promptly to the International Bur eau. The notice shall be considered to have been submitted to the 
International Bureau on the date marked. 
 
90
bis.5   Signature 
 
     (a) Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall, subject to paragraph ( b), 
be signed by the applicant. Where one of the appli cants is considered to be the common representative IP/N/1/AUS/P/6 
Page 282  
 
under Rule 90.2 ( b), such notice shall, subject to paragraph ( b), require the signature of all the 
applicants.       (b) Where two or more applicants file an intern ational application which designates a State whose 
national law requires that national app lications be filed by the inventor  and where an applicant for that 
designated State who is an inventor could not be found or reached after diligent effort, a notice of 
withdrawal referred to in Rules 90 bis.1 to 90 bis.4 need not be signed by th at applicant (“the applicant 
concerned”) if it is signed by at least one applicant and   (i) a statement is furnished explaining, to  the satisfaction of the receiving Office, the 
International Bureau or the Internationa l Preliminary Examining Authority, as the 
case may be, the lack of signature of the applicant concerned, or 
 
 (ii) in the case of a notice of withdrawal referred to in Rule 90
bis.1 (b), 90bis.2 (d) or  
90bis.3 (c), the applicant concerned did not sign the request but the requirements of 
Rule 4.15 ( b) were complied with, or 
 
 (iii) in the case of a notice of withdrawal referred to in Rule 90bis.4 (b), the applicant 
concerned did not sign the demand but the requirements of Rule 53.8 ( b) were 
complied with, or did not sign the later el ection concerned but the requirements of 
Rule 56.1 ( c) were complied with. 
 
90bis.6   Effect of Withdrawal 
 
     (a) Withdrawal under Rule 90bis of the international application, any designation, any priority 
claim, the demand or any election shall have no effe ct in any designated or elected Office where the 
processing or examination of the international appli cation has already started under Article 23 (2) or 
Article 40 (2). 
 
     (b) Where the international application is withdrawn under Rule 90bis.1, the international 
processing of the international app lication shall be discontinued. 
 
     (c) Where the demand or all elections are withdrawn under Rule 90bis.4, the processing of the 
international application by the International Pre liminary Examining Authority shall be discontinued. 
 
90bis.7 Faculty under Article 37 (4) (b) 
 
     (a) Any Contracting State whose national law provides for what is described in the second part of 
Article 37 (4) ( b) shall notify the International Bureau in writing. 
      (b) The notification referred to in paragraph ( a) shall be promptly published by the International 
Bureau in the Gazette, and shall have effect in resp ect of international applications filed more than 
one month after the date of such publication. 
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Rule 91 
Obvious Errors in Documents 
 
91.1   Rectification 
 
     (a) Subject to paragraphs ( b) to ( gquater ), obvious errors in the inte rnational application or other 
papers submitted by the applicant may be rectified.       (b) Errors which are due to the fact that some thing other than what was obviously intended was 
written in the international application or other paper shall be regarded as obvious errors. The 
rectification itself shall be obvious in the sense th at anyone would immediately realize that nothing 
else could have been intended than what is offered as rectification.       (c) Omissions of entire elements or sheets of the international application, even if clearly 
resulting from inattention, at the stage, for exampl e, of copying or assembling sheets, shall not be 
rectifiable. 
      (d) Rectification may be made on the request of the applicant.  The authority having discovered 
what appears to be an obvious error may invite th e applicant to present a request for rectification as 
provided in paragraphs ( e) to ( g
quater ).  Rule 26.4 shall apply mutatis  mutandis  to the manner in which 
rectifications shall be requested. 
      (e)  No rectification shall be made except with the express authorization: 
  (i) of the receiving Office if the error is in the request, 
 
 (ii) of the International Searching Authority if  the error is in any part of the international 
application other than the request or in any paper submitted to that Authority, 
  (iii) of the International Preliminary Examining Authority if the error is in any part of the 
international application other than the re quest or in any paper submitted to that 
Authority, 
  (iv) of the International Bureau if the error is in any paper, other than the international 
application or amendments or corrections to that application, submitted to the International Bureau. 
 
     (f) Any authority which authorizes or refuses any r ectification shall promptly notify the applicant 
of the authorization or refusal and, in the case of refusal, of the reasons therefor. The authority which 
authorizes a rectification shall promptly notify the International Bureau accordingly. Where the 
authorization of the rectification was refused, the International Bureau shall, upon request made by 
the applicant prior to the tim e relevant under paragraph ( g
bis), (gter) or ( gquater ) and subject to the 
payment of a special fee whose amount shall be fi xed in the Administrative Instructions, publish the 
request for rectification together with the intern ational application. A copy of the request for 
rectification shall be included in the communicati on under Article 20 where a copy of the pamphlet is 
not used for that communication or where the interna tional application is not published by virtue of 
Article 64 (3). 
      (g) The authorization for rectification referred to in paragraph ( e) shall, subject to paragraphs 
(g
bis), (gter) and ( gquater ), be effective: 
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 (i) where it is given by the receiving Office or by the International Searching Authority, 
if its notification to the International Bureau  reaches that Bureau before the expiration 
of 17 months from the priority date; 
  (ii) where it is given by the International Pr eliminary Examining Authority, if it is given 
before the establishment of the intern ational preliminary examination report; 
  (iii) where it is given by the International Bureau, if it is given before the expiration 
of 17 months from the priority date. 
 
     (g
bis) If the notification made under paragraph ( g) (i) reaches the International Bureau, or if 
the rectification made under paragraph ( g) (iii) is authorized by the International Bureau, after the 
expiration of 17 months from the pr iority date but before the techni cal preparations for international 
publication have been completed, the authorization shall be effective and the rectification shall be 
incorporated in the said publication. 
 
     (gter) Where the applicant has asked  the International Bureau to publish his international 
application before the expiration of 18 months from the priority date, any notification made under 
paragraph ( g) (i) must reach, and any rectification made under paragraph ( g) (iii) must be authorized 
by, the International Bureau, in order for the authoriza tion to be effective, not later than at the time of 
the completion of the technical preparations for international publication. 
 
     (gquater ) Where the international application is not published by virtue of Article 64 (3), any 
notification made under paragraph ( g) (i) must reach, and any rectification made under 
paragraph ( g) (iii) must be authorized by, the Internationa l Bureau, in order for the authorization to be 
effective, not later than at th e time of the communication of th e international application under 
Article 20.  
 
Rule 92 
Correspondence 
 92.1   Need for Letter and for Signature 
      (a) Any paper submitted by the applicant in the cour se of the international procedure provided for 
in the Treaty and these Regulations, other than the intern ational application itself, shall, if not itself in 
the form of a letter, be accompanied by a letter identifying the international application to which it 
relates. The letter shall be signed by the applicant.       (b) If the requirements provided for in paragraph ( a) are not complied with, the applicant shall be 
informed as to the non-compliance and be invited to  remedy the omission within a time limit fixed in 
the invitation. The time limit so fixed shall be re asonable in the circumstanc es; even where the time 
limit so fixed expires later than the time limit appl ying to the furnishing of the paper (or even if the 
latter time limit has already expired), it shall be not less than 10 days and not more than one month 
from the mailing of the invitation. If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwi se, the applicant shall be informed that the paper 
has been disregarded. 
 
     (c) Where non-compliance with the require ments provided for in paragraph ( a) has been 
overlooked and the paper taken into account in the international procedure, the non-compliance shall 
be disregarded. 
 IP/N/1/AUS/P/6 
Page 285 
 
 
92.2   Languages 
      (a) Subject to Rules 55.1 and 66.9 and to paragraph ( b) of this Rule, any letter or document 
submitted by the applicant to the International Sear ching Authority or the International Preliminary 
Examining Authority shall be in the same language as th e international application to which it relates.  
However, where a translation of the international application has been transmitted under Rule 23.1 ( b) 
or furnished under Rule 55.2, the language of such translation shall be used.       (b) Any letter from the applicant to the Internati onal Searching Authority or the International 
Preliminary Examining Authority may be in a la nguage other than that of the international 
application, provided the said Authority authorized the use of such language. 
      (d) Any letter from the applicant to the Internati onal Bureau shall be in English or French. 
      (e) Any letter or notification from the Internationa l Bureau to the applicant or to any national 
Office shall be in English or French. 
 
92.3   Mailings by National Offices and Intergovernmental Organizations 
      Any document or letter emanating from or transmitted by a national Office or an intergovernmental organization a nd constituting an event from the date of which any time limit under 
the Treaty or these Regulations commences to run sha ll be sent by air mail, provided that surface mail 
may be used instead of air mail in cases where surf ace mail normally arrives at its destination within 
two days from mailing or where air mail service is not available. 
 
92.4   Use of Telegraph, Teleprinter, Facsimile Machine, Etc. 
 
     (a) A document making up the international a pplication, and any later document or 
correspondence relating thereto, may, notwithstanding the provisions of Rules 11.14 and 92.1 ( a), but 
subject to paragraph ( h), be transmitted, to the extent feasible , by telegraph, teleprinter, facsimile 
machine or other like means of communication resulti ng in the filing of a printed or written document. 
 
     (b) A signature appearing on a document transmitte d by facsimile machine shall be recognized 
for the purposes of the Treaty and th ese Regulations as a proper signature. 
      (c) Where the applicant has attempted to transmit a document by any of the means referred to in 
paragraph ( a) but part or all of the received document is  illegible or part of the document is not 
received, the document shall be treated as not havi ng been received to the extent that the received 
document is illegible or that the attempted transmission failed. The national Office or 
intergovernmental organization shall promptly notify the applicant accordingly.       (d) Any national Office or intergovernmental organi zation may require that the original of any 
document transmitted by any of the m eans referred to in paragraph ( a) and an accompanying letter 
identifying that earlier transmission be furnished within 14 days from the date of the transmission, 
provided that such requirement has been notified to  the International Bureau and the International 
Bureau has published information thereon in the G azette. The notification shall specify whether such 
requirement concerns all or only certain kinds of documents.  
     (e) Where the applicant fails to furnish th e original of a document as required under 
paragraph (
d), the national Office or intergovernmental  organization concerned may, depending on 
the kind of document transmitted and ha ving regard to Rules 11 and 26.3, 
  (i) waive the requirement under paragraph ( d), or 
 IP/N/1/AUS/P/6 
Page 286  
 
 (ii) invite the applicant to furnish, within  a time limit which shall be reasonable under the 
circumstances and shall be fixed in the i nvitation, the original of the document 
transmitted, 
 provided that, where the document transmitted contains defects, or shows that the original contains 
defects, in respect of which the national Office or intergovernmental organization may issue an 
invitation to correct, that Office or organization may issue such an invitation in addition to, or instead 
of, proceeding under item (i) or (ii).       (f) Where the furnishing of the original of a document is not required under paragraph ( d) but the 
national Office or intergovernmental organization cons iders it necessary to receive the original of the 
said document, it may issue an invitation as provided for under paragraph ( e) (ii). 
      (g) If the applicant fails to comply w ith an invitation under paragraph ( e) (ii) or ( f): 
 
 (i) where the document concerned is the inte rnational application, the latter shall be 
considered withdrawn and the receiving Office shall so declare; 
  (ii) where the document concerned is a document subsequent to the international 
application, the document shall be c onsidered as not having been submitted. 
 
     (h) No national Office or intergovernmental or ganization shall be obliged to receive any 
document submitted by a means referred to in paragraph ( a) unless it has notified the International 
Bureau that it is prepared to receive such a docum ent by that means and the International Bureau has 
published information thereon in the Gazette. 
 
Rule 92
bis 
Recording of Changes in Certain Indications in the Request or the Demand 
 
92bis.1   Recording of Changes by the International Bureau 
 
     (a) The International Bureau shall,  on the request of the applicant or the receiving Office, record 
changes in the following indications appearing in the request or demand:   (i) person, name, residence, nati onality or address of the applicant, 
 
 (ii) person, name or address of the agen t, the common representative or the inventor. 
      (b) The International Bureau shall not record the requested change if the request for recording is 
received by it after the expiration:  
 (i) of the time limit referred to in Article 22 (1), where Article 39 (1) is not applicable 
with respect to any Contracting State; 
  (ii) of the time limit referred to in Article 39 (1) ( a), where Article 39 (1) is applicable 
with respect to at least one Contracting State. 
 IP/N/1/AUS/P/6 
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Rule 93 
Keeping of Records and Files 
 
93.1   The Receiving Office 
 
     Each receiving Office shall keep the records re lating to each international application or purported 
international application, including the home copy, for at least 10 years from the international filing 
date or, where no international filing date  is accorded, from the date of receipt. 
 
93.2   The International Bureau 
 
     (a) The International Bureau shall keep the file, including the record copy, of any international 
application for at least 30 years from the date of receipt of the record copy.       (b) The basic records of the Internationa l Bureau shall be kept indefinitely. 
 
93.3   The International Searching and Preliminary Examining Authorities 
      Each International Searching Authority an d each International Preliminary Examining Authority 
shall keep the file of each international app lication it receives for at least 10 years from the 
international filing date.  
93.4   Reproductions 
      For the purposes of this Rule, records, copies and files may be kept as photographic, electronic or 
other reproductions, provided that the reproductions are such that the obligations to keep records, 
copies and files under Rules 93.1 to 93.3 are met. 
 
Rule 94 
Access to Files 
 
94.1   Access to the File Held by the International Bureau 
 
     (a) At the request of the applicant or any person authorized by the applicant, the International 
Bureau shall furnish, subject to reimbursement of  the cost of the service, copies of any document 
contained in its file.  
     (b) The International Bureau shall,  at the request of any person but  not before the international 
publication of the international application and s ubject to Article 38, furnish, subject to the 
reimbursement of the cost of the service, copies of any document contained in its file. 
 
94.2   Access to the File Held by the Inter national Preliminary Examining Authority  
 
     At the request of the applicant or any person authorized by the applicant, or, once the international 
preliminary examination report has been establishe d, of any elected Office, the International 
Preliminary Examining Authority shall furnish, subj ect to reimbursement of the cost of the service, 
copies of any document contained in its file. 
 
94.3  Access to the File Held by the Elected Office 
      If the national law applicable by any elected O ffice allows access by third parties to the file of a 
national application, that Office may allow access to any documents relating to the international 
application, including any document relating to the international preliminary examination, contained 
in its file, to the same extent as provided by the national law for access to the file of a national IP/N/1/AUS/P/6 
Page 288  
 
application, but not before the international publ ication of the international application.  The 
furnishing of copies of documents may be subject  to reimbursement of the cost of the service. 
 
Rule 95 
Availability of Translations 
 95.1   Furnishing of Copies of Translations 
      (a) At the request of the International Bureau, any designated or elected Office shall provide it 
with a copy of the translation of the international a pplication furnished by the applicant to that Office. 
 
     (b) The International Bureau may, upon request and subject to reimbursement of the cost, furnish 
to any person copies of the tran slations received under paragraph ( a). 
 
Rule 96 
The Schedule of Fees 
 
96.1   Schedule of Fees Annexed to Regulations 
      The amounts of the fees referred to in Rules 15 and 57 shall be expressed in Swiss currency. They shall be specified in the Schedule of Fees which is annexed to these Regulations and forms an integral 
part thereof. 
 IP/N/1/AUS/P/6 
Page 289 
 
 
SCHEDULE OF FEES 
Fees Amounts 
1. Basic Fee:  
(Rule 15.2 ( a))  
(a) if the international application contains 
not more than 30 sheets 650 Swiss francs 
(b)  if the international application contains 
more than 30 sheets 650 Swiss francs plus 15 Swiss francs for each sheet 
in excess of 30 sheets 
2. Designation Fee:  
(Rule 15.2 ( a))  
(a) for designations made under Rule 4.9 ( a) 140 Swiss francs per designation, provided that any 
designation made under Rule 4.9 ( a) in excess of 8 
shall not require the payment of a designation fee 
(b) for designations made under Rule 4.9 ( b) 
and confirmed under Rule 4.9 ( c) 140 Swiss francs per designation 
3. Handling Fee: 233 Swiss francs 
(Rule 57.2 ( a))  
 
Reductions  4. The total amount of the fees payable under items 1 and 2 ( a) is reduced by 200 Swiss francs if 
the international application is, in accordance with and to the extent provided for in the 
Administrative Instructions, filed on paper togeth er with a copy thereof in electronic form. 
 5. All fees payable (where applicable, as reduced under item 4) are reduced by 75% for 
international applications filed by any applican t who is a natural person and who is a national 
of and resides in a State whose per capita na tional income is below US$3,000 (according to 
the average per capita national income figures u sed by the United Nations for determining its 
scale of assessments for the contributions payabl e for the years 1995, 1996 and 1997); if there 
are several applicants, each must satisfy those criteria. IP/N/1/AUS/P/6 
Page 290  
 
Schedule 3 Formal requirements for documents to be filed 
  (paragraphs 3.2 (2) (b) and 10.2 (1) (a) and subregulation 22.16 (2)) 
    
1 Terminology and signs  
 
 In a document:    (a) units of description must be expressed in terms of the metric system or, if first 
expressed in other terms, must be expressed also in terms of that system; and  
 
 (b) temperatures must be expressed in degrees Celsius or, if first expressed in another 
manner, must be expressed also in degrees Celsius; and  
  (c) to indicate units of measurement, the rul es of international practice must be observed; 
and  
  (d) in chemical formulas, the symbols, atom ic weights and molecular formulas in general 
use must be employed; and  
  (e) other terms, signs and symbols that are generally accepted in the art to which the 
document principally relates must be employed; and  
  (f) if the document is expressed in English — the beginning of any decimal fraction must 
be marked by a period; and  
 
 (g) units, signs, symbols and other te rms must be used consistently.  
 
1A Title of specification  
 
 A specification must commence with a short and precise title.   2 Fitness for reproduction  
 
 Each sheet comprising a document or part of a document:    (a) must be presented in a manner that allo ws any number of copies of the sheet to be 
reproduced directly by means of photography, an electrostatic or photo-offset process 
and microfilming; and  
  (b) must not be folded, creased or cracked; and    (c) subject to subclause 8 (4) (“drawings, formulas and tables in textual matter”) and 
subclause 11 (14) (“special requirements for drawings”), must be presented in a 
vertical format; and  
  (d) must be durable, flexible, smooth, st rong, white and have a matt finish; and  
 
 (e) must be international sheet size A4; and  
  (f) subject to subparagraph 3.2 (2) (c) (ii) of these Regulati ons, must be printed on only 
one side of the sheet.  
 3 Separate sheets  IP/N/1/AUS/P/6 
Page 291 
 
 
      (1) The patent request, the description of the invention, the claim or claims, any drawing, and an 
abstract, must each commence on a separate sheet.  
      (2) The sheets comprising a document must  be connected so that they may be readily:  
 
 (a) turned to be read; and    (b) separated for the purposes of reproduction and then rejoined.   4 Margins  
 
     (1) Subject to subclause (2), each sheet of a specification, or an abstract, must have a margin that 
is not less than:  
 
 (a) at the top — 2 cm; and  
  (b) on the left — 2.5 cm; and    (c) on the right — 2 cm; and   
 (d) at the bottom — 2 cm.   
      (2) A sheet of drawings:    (a) must have a margin that is not less than:  
 
  (i) at the top — 2.5 cm; and     (ii) on the left — 2.5 cm; and     (iii) on the right — 1.5 cm; and  
 
  (iv) at the bottom — 1 cm; and    (b) must not contain a frame surrounding the drawings.   5 Numeration  
 
     (1) The parts of a patent application referre d to in this subclause must be presented in the 
following order:  
  (a) patent request;  
 
 (b) description of the invention;    (c) claim or claims;   
 (d) drawing or drawings;  
  (e) abstract.   IP/N/1/AUS/P/6 
Page 292  
 
     (2) Subject to subclause (3), the sheets of  a specification must be numbered consecutively in 
arabic numerals beginning with “1” that are pla ced at the top, and in the middle, of the sheet, 
but not within the margins of the sheet.  
      (3) The sheets of a specification that contain drawings must be numbered by means of sets of 2 
arabic numerals separated by an oblique st roke, the first numeral in each set being the 
consecutive number of each sheet, beginning with  the arabic number “1”, and the second 
being the total number of the sheets containing the drawings.  
      (4) If there is more than 1 claim referred to  in a complete specification, the claims must be 
numbered consecutively in arabic numerals beginning with “1”.  
      (5) In a statement of proposed amendments:    (a) the proposed amendments must  be numbered consecutively; and  
 
 (b) if the statement is a subsequent one, the numbering must be consecutive with the 
numbers in the previous statement.  
 
6 Numbering of lines  
  Every fifth line on each sheet of the specification must be numbered:  
  (a) in arabic numerals; and    (b) on the left of the sheet to the right of the margin.  
 
7 Writing of textual matter  
 
     (1) Subject to subclause (2), except with  the consent of the Commissioner, a patent request, 
specification and any abstract relating to a patent  application must be typewritten or otherwise 
machine printed. 
 
     (2) If necessary, symbols relating to graphic matter, or chemical or mathematical formulas, may 
be handwritten or drawn, as the case may be.  
      (3) The lines of text in a typewritten document must be 1
1/2 spaced or double spaced.  
 
     (4) The text in a document must be presented in  letters the capitals of which are not less than 0.21 
cm high, in a dark colour and be indelible.  
 
8 Drawings, formulas and tables in textual matter  
      (1) A patent request must not include a drawing.  
      (2) The description of an invention or an abstract:    (a) must not include a drawing; and  
 
 (b) may include chemical or mathematical formulas or tables.         (3) A claim:   
 (a) must not include a drawing; and  IP/N/1/AUS/P/6 
Page 293 
 
 
  (b) may include chemical or mathematical formulas; and    (c) if, in the reasonable opinion of the Co mmissioner, the subject matter of the claim 
makes the use of a table desirable — may include tables.  
 
     (4) A table or a chemical or mathematical fo rmula may be presented in a horizontal format if it 
cannot be presented in a vertical format in a satisfactory manner.  
      (5) If a table or a chemical or mathematical formula is presented in a horizontal format, the top of 
the table or formula must be placed on the left side of the paper.  
 
9 Words in drawings  
 
 A drawing must not include text, other than a word or words indispensable to the 
understanding of the drawing.  
 
10 Alterations  
 
     (1) Subject to subclause (2), a document mu st be free from erasures, alterations, overwritings and 
interlineations.  
 
     (2) If, in the reasonable opinion of the Comm issioner, failure to comply with subclause (1) would 
not:  
  (a) compromise the authenticity; or  
 
(b) jeopardise the likelihood of clear reproduction;  
 
 of a document, the Commissioner may excu se it from compliance with subclause (1).  
 
11 Special requirements for drawings  
 
     (1) A drawing must be executed in durable, black, dense, dark, uniformly thick and well-defined, 
lines and strokes without colouring.  
      (2) A cross-section must be indicated by ob lique hatching that does not impede the clear reading 
of reference letters, numbers or signs and leading lines.  
      (3) The scale of a drawing and the distinctness of its execution must enable all the details to be 
distinguished without difficulty on a photographic reproduction of the drawing with a two-thirds linear reduction in size.  
 
     (4) If the scale of a drawing is given on the drawing, it must be represented graphically.  
      (5) A letter, number or reference line that is shown on a drawing must be presented simply and be 
clear.  
 
     (6) Brackets, braces, circles or inverted co mmas must not be used in association with letters or 
numbers.  
      (7) A line in a drawing must ordinarily be drawn with the aid of drafting instruments.   
     (8) A sheet of drawings may include more than 1 drawing.  IP/N/1/AUS/P/6 
Page 294  
 
      (9) Each element of a drawing must be shown in proper proportion to each other element of the 
drawing, other than where the use of a different  proportion is indispensable for the clarity of 
the drawing.  
 
     (10) The height of a letter or a number in a drawing must not be less than 0.32 cm.  
      (11) For the lettering of a drawing, the Latin or, if customary, the Greek alphabet must be used.  
      (12) If drawings on 2 or more sheets of draw ings form in effect a single drawing, the drawings 
must be so arranged that the single drawing can  be assembled without concealing any part of 
the other drawings.  
      (13) Subject to subclause (14), if there is more than 1 drawing on a sheet of drawings, the 
drawings must be presented on the sheet of drawings in a vertical format and separate from 
each other.  
      (14) If the drawings on a sheet of drawings cannot be presented in a vertical format, they must be 
presented in a horizontal format with the tops of  the drawings on the left of the sheet of 
drawings.   
 
     (15) The drawings must be numbered con secutively in arabic numerals beginning with “1”.  
      (16) A reference sign that is not mentioned in  the description of the invention must not be referred 
to in a drawing.  
 
     (17) A reference sign that is not mentioned in a drawing must not be referred to in the description.  
      (18) A feature of a drawing that is denoted by a reference sign must be so denoted consistently.  
 
12 Amino acid sequences  and nucleotide sequences 
  An amino acid sequence or a nucleotide sequence that is part of a specification may be filed 
in a format approved by the Commissioner on a compact disk or by other electronic means approved by the Commissioner. IP/N/1/AUS/P/6 
Page 295 
 
 
Schedule 4 Convention countries 
  (subregulation 8.5 (1) and regulation 11.1) 
 Albania Algeria 
Angola 
Antigua and Barbuda Argentina Armenia  
Austria 
Azerbaijan 
Bahamas Bahrain Bangladesh Barbados 
Belarus 
Belgium Belize Benin Bolivia Bosnia and Herzogovina 
Botswana 
Brazil Brunei Darussalam Bulgaria Burkina Faso 
Burundi 
Cambodia, Kingdom of Cameroon Canada Central African Republic 
Chad 
Chile China Colombia Congo 
Costa Rica 
Côte d’Ivoire Croatia Cuba Cyprus Czech Republic 
Democratic Republic of the Congo 
Denmark (including Faroe Islands) Djibouti Dominica Dominican Republic 
Ecuador 
Egypt El Salvador Equatorial Guinea Estonia 
Fiji Finland 
France (including all Overseas Departments and 
Territories) 
Gabon Gambia Georgia Germany 
Ghana 
Greece Grenada Guatemala Guinea 
Guinea-Bissau 
Guyana  
Haiti Holy See Honduras Hong Kong, China 
Hungary 
Iceland India Indonesia Iran, Islamic Republic of 
Iraq 
Ireland Israel Italy Jamaica 
Japan 
Jordan Kazakhstan Kenya Korea, Democratic People’s Republic of 
Korea, Republic of 
Kuwait Kyrgyzstan Lao People’s Democratic Republic Latvia Lebanon 
Lesotho 
Liberia  
Libyan Arab Jamahiriya Liechtenstein Lithuania 
Luxembourg 
Macau Madagascar Malawi Malaysia 
Maldives 
Mali Singapore  IP/N/1/AUS/P/6 
Page 296  
 
Malta Mauritania Mauritius Mexico Moldova 
Monaco 
Mongolia Morocco Mozambique Myanmar 
Namibia 
Netherlands (including the Netherlands Antilles 
and Aruba) 
New Zealand (excluding the Cook Islands, Niue 
and Tokelau) 
Nicaragua 
Niger Nigeria Norway Oman 
Pakistan 
Panama Papua New Guinea Paraguay Peru Philippines 
Poland 
Portugal Qatar Romania Russian Federation 
Rwanda 
Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino 
Sao Tome and Principe, Democratic Republic of 
Senegal Sierra Leone  Slovak Republic 
Slovenia Solomon Islands South Africa Spain 
Sri Lanka 
Sudan Surinam Swaziland Sweden 
Switzerland 
Syrian Arab Republic Taiwan Tajikistan Tanzania 
Thailand 
The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia 
Turkey 
Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom (including the Isle of Man) 
United Republic of Tanzania 
United States of America (including all territories 
and possessions, including the Commonwealth of Puerto Rico) 
Uruguay 
Uzbekistan 
Venezuela Viet Nam Yugoslavia Zambia 
Zimbabwe 
 
 
 
 
  IP/N/1/AUS/P/6 
Page 297 
 
 
Schedule 5 Prescribed topics 
  (regulations 20.2A, 20.2B, 20.3, 20.6, 20.8, 20.9 and 20.16) 
  
General outcome 
 
 The overall objective of a course of study is fo r a student to have an appropriate level of: 
  (a) knowledge and practical application so that the student can give advice about 
applicable categories of protection for particular activities; and 
 
 (b) appreciation of the advantages of each form of protection for a client; and   (c) understanding of how to get and mainta in appropriate protection for a client; and 
 
 (d) understanding of the required standard of professional conduct. 
 IP/N/1/AUS/P/6 
Page 298  
 
Group A Legal process and overview of intellectual property 
 
Outcome 
 
 An understanding of the Australian legal system  and how intellectual property rights may be 
protected. 
 
Topics 
 
1. The Australian legal system, including: 
 (a) appeal or review procedure; 
 (b) Parliament;  (c) the courts;  (d) precedent;  (e) statutory interpretation. 
 
2. Overview of intellectual property rights:  (a) patents;  (b) trade marks;  (c) designs;  (d) copyright; 
 (e) circuit layouts; 
 (f) plant breeders’ rights;  (g) confidential information and trade secrets;  (h) trade practices and anti-competitive practices;  (i) international intellectual property treaties.  Group B Professional conduct  Outcome 
 
 An understanding of the rights, privileges a nd responsibilities of a patent or trade mark 
attorney. 
 
Topics 
 
 (a) conflict of interest; 
 (b) privilege; 
 (c) confidentiality;  (d) professional liability and negligence;  (e) code of conduct;  (f) maintenance of rights and monitoring systems;  (g) fiduciary obligations to clients. IP/N/1/AUS/P/6 
Page 299 
 
 
Group C Trade mark law 
 Outcome 
 An understanding of the principles of trade ma rks and the trade mark system in Australia. 
 Topics 
 
 (a) passing off and unfair competition;  (b) advice on registrability;  (c) comparison of business names and trade marks; 
 (d) marks excluded from registration; 
 (e) other provisions for trade indicia protection:   (i) Olympic insignia legislation;   (ii) domain names;   (iii) geographical indications; 
 (f) criteria that affect registrability: 
  (i) distinctiveness;   (ii) deception and confusion;  (g) ownership — authorship of trade marks;  (h) use:   (i) intention to use; 
  (ii) honest concurrent use; 
  (iii) prior continuous use;  (i) protection:   (i) infringement;   (ii) well known marks. 
 IP/N/1/AUS/P/6 
Page 300  
 
Group D Trade mark practice 
 Outcome 
 
 Ability to advise and to handle the interests of  a client in prosecution and maintenance of 
trade mark applications, including advice on the desirability of seeking trade mark protection 
and provision of alternative protecti on in Australia and other countries. 
Topics 
 
 (a) classification systems; 
 (b) searching; 
 (c) types of application and registration;  (d) trade marks office practice and procedure:   (i) filing;   (ii) examination; 
  (iii) hearings; 
  (iv) opposition;   (v) evidence;   (vi) extension of time;  (e) removal for non-use;  (f) rectification; 
 (g) registration of security interests; 
 (h) border controls;  (i) exploitation:   (i) assignment;   (ii) licensing; 
  (iii) parallel imports; 
  (iv) managing a trade marks portfolio;  (j) misuse and criminal sanctions;  (k) international:   (i) treaties and conventions;   (ii) regional systems (eg CTM); 
              (iii) differences between system s (including requirements to use, first to file, first 
to use, post-acceptance,  pre-acceptance, registration opposition and renewal 
requirements); 
  (iv) other classification systems;   (v) unacceptable trade marks — restrictions on registrability; 
              (vi) practical differences (eg legalised and notarised documents, powers of 
attorneys). IP/N/1/AUS/P/6 
Page 301 
 
 
Group E Patent law 
 Outcome 
 An understanding of the principles of pate nts and the patent system in Australia. 
 Topics 
 
 (a) subject matter:     (i) manner of manufacture;   (ii) newness; 
  (iii) novelty; 
  (iv) inventive step;   (v) secret use;   (vi) exclusions from patentability;   (vii) utility; 
 (b) section 40 (specifications): 
  (i) description;   (ii) claims;   (iii) fair basis;  (c) infringement;  (d) inventorship; 
 (e) ownership; 
 (f) breach of confidence.  IP/N/1/AUS/P/6 
Page 302  
 
Group F Patent system 
 Outcome 
 
 Ability to advise and to handle the interests of  a client in prosecution and maintenance of a 
patent application, including advice on the desirability of seeking patent protection and 
provision of alternative protection in Australia and other countries. 
 
Topics 
  (a) types of application: 
  (i) provisional;   (ii) complete;   (iii) divisional;   (iv) patent of addition; 
  (v) Convention; 
  (vi) priority dates;  (b) Patent Office practice;  (c) amendment;  (d) opposition;  (e) re-examination; 
 (f) maintenance; 
 (g) extension of term;  (h) extension of time;  (i) revocation;  (j) treaties and conventions, including: 
  (i) Patent Cooperation Treaty; 
  (ii) Budapest Treaty;   (iii) Paris Convention;  (k) searching;  (l) assignment;  (m) licensing; 
 (n) compulsory licences; 
 (o) Crown use;  (p) restrictions on exploitation:   (i) Patents Act 1990 ; 
  (ii) Trade Practices Act 1974 ; 
 (q) circuit layout legislation and practice; 
 (r) plant protection legislation and practice;  (s) patentability in other countries;  (t) patent procedure in other countries, particularly major trading parties (eg New 
Zealand, United States of America, European Community, People’s Republic of China, Japan); 
 (u) petty patents. IP/N/1/AUS/P/6 
Page 303 
 
 
Group G Drafting patent specifications 
 Outcome 
 Ability to obtain relevant information about an  invention and from that, given the prior art, 
draft a specification to accompany a provisional a pplication, a standard complete application, 
an international application a nd a petty patent application. 
  
Group H Interpretation and validity of patent specifications 
 
Outcome  
 Ability to express an understa nding of a patent specification and what it covers for the 
purpose of advising on infringement, validity over  given prior art, section 40 of the Act and 
other grounds of revocation and amendment. 
 
 
Group I Designs 
 Outcome 
  Ability to advise and to handle the interests of  a client in prosecution and maintenance of a 
design application, including advice on the desirability of seeking design protection and 
provision of alternative protection in Australia and other countries. 
 
Topics 
 
 (a) registrability;  (b) newness;  (c) registration procedure;  (d) maintenance;  (e) office practice; 
 (f) third party objection; 
 (g) infringement;  (h) expunction;  (i) copyright;  (j) international aspects of design practice. 
 IP/N/1/AUS/P/6 
Page 304  
 
Schedule 6 Prescribed qualifications 
  (regulations 20.3, 20.14, 20.15 and 20.16) 
 
Column 1  Column 2  
Item  Qualification  
1 A degree, diploma or postgraduate award of an Australian tertiary institution in a field 
of technology that contains potentially patentable subject matter 
2 An award of an overseas education institution in a field of technology that contains 
potentially patentable subject matter 
3  A pass in an examination in a branch of engineering or science approved under 
subregulation 20.14 (3) that qualifies for co rporate membership of The Institution of 
Engineers, Australia, The Royal Australian Chemical Institute or another professional 
institution approved under subregulation 20.14 (5) 
 
 
Schedule 7 Fees  
  (regulations 22.2, 22.3 and 22.4)  IP/N/1/AUS/P/6 
Page 305 
 
 
Part 1 Patent attorneys 
 
Item Matter Fee ($) 
1 Applying for admission to sit for an examination conducted by the Board 400 
2 Applying for grant of a supplementary examination conducted by the Board 200 
3 A report of reasons for failure of an  examination conducted by the Board 200 
4 Applying for registration as a patent attorney 200 
5 Annual registration fee payable by a patent attorney 250 6 Annual registration fee payable for combin ed registration as a patent attorney and 
trade marks attorney 320 
7 Applying under regulation 20.19 or 20.19A 160 
 
 Part 2 General fees 
 
Column 1 
Item Column 2 
Matter Column 3 
Fee 
1 On filing a request for a patent accompanied by a provisional 
specification $80 
2 On filing a request for a petty patent accompanied by a 
complete specification $280 
3 On filing a request for a standard patent accompanied by a 
complete specification:  
 (a) filing; and $280 
 (b) if the number of sheets comprising the specification, 
including any drawings contained in the specification, 
exceeds 30 — for each sheet in excess of 30; and $12 
 (c) if the specification includes an amino acid sequence or a 
nucleotide sequence filed on a compact disk or by other electronic means $1 000 
4 On filing a request for an examination of a patent request and 
complete specification:  
 (a) in the case of a request for an examination to be made in 
accordance with section 45 of the Act $290 
 (b) in the case of a request for a modified examination $290 
5 On filing a request under subsection 44 (3) of the Act 
requiring the Commissioner to dir ect an applicant to request 
examination $65 
6 On filing a request under subsection 97 (2) of the Act for re-
examination of a complete specification $1,200 
7 Continuation fee under paragraph 142 (2) (d) of the Act, or 
renewal fee under paragraph 143 (a) of the Act for:  
 (c) the fifth anniversary $165 IP/N/1/AUS/P/6 
Page 306  
 
Column 1 
Item Column 2 
Matter Column 3 
Fee 
 (d) the sixth anniversary $200 
 (e) the seventh anniversary $235 
 (f) the eighth anniversary $270 
 (g) the ninth anniversary $305 
 (h) the tenth anniversary $345 
 (i) the eleventh anniversary $385 
 (j) the twelfth anniversary $430 
 (k) the thirteenth anniversary $475 
 (l) the fourteenth anniversary $525 
 (m) the fifteenth anniversary $575 
 (n) the sixteenth anniversary $630 
 (o)  the seventeenth anniversary $680 
 (p)  the eighteenth anniversary $730 
 (q)  the nineteenth anniversary $790 
 (r)  If an extension of the term of a standard patent is 
granted under section 76 of the Act: $790 
 (i) the twentieth anniversary for the patent; and  
 (ii) each subsequent anniversary for the patent 
happening during the period of extension  
 plus:  
 if paid within 6 months after the anniversary in addition to any other 
fee payable in relation 
to this item —  
$65 for each month, or 
part of a month, in the period between the 
anniversary and the 
day when the fee is paid 
8 On filing a notice of opposition under regulation 5.3 $500 9 On filing a request under subre gulation 5.5 (1) for dismissal 
of opposition $65 
10 On filing an application under subregulation 5.10 (2) for an 
extension of time, for each month, or part of a month, for which the extension is sought $65 
11 On making a representation to the Commissioner:  
 (a) under regulation 5.3A or su bregulation 5.9 (3) objecting 
to a proposed amendment; or $500 IP/N/1/AUS/P/6 
Page 307 
 
 
Column 1 
Item Column 2 
Matter Column 3 
Fee 
 (b) under subparagraph 5.10 (5) (c) (i) objecting to an 
application or proposed action $500 
13 On filing an application for the grant of an extension of the 
term of a petty patent under section 69 of the Act $350 
14 On filing an application under section 66 of the Act for a 
duplicate of a patent to be sealed $65 
15 On filing a request for leave to amend:  
 (a) a complete specification under section 104 of the Act, 
before a request for examination has been filed or after 
the complete specification has been accepted; or $105 
 (b) a patent request for a petty patent to make it a patent 
request for a standard patent $105 
16 On filing a request under subsection 150 (1) of the Act to 
restore a lapsed application $90 
17 On filing an application unde r subsection 223 (2) of the Act 
for an extension of time on a ground specified in 
paragraph 223 (2) (a) of the Act:  
 (a) for each month, or part of a month, for which the 
application is made; and $65 
 (b) if the application is filed after the end of the time to be 
extended $90 
18 For granting an extension of time, on a ground specified in 
paragraph 223 (2) (a) of the Act, greater than that applied for 
by the applicant — for each month, or part of a month, of extension granted $65 less any amount 
paid under 
paragraph (a) of item 17 
19 On filing an application unde r subsection 223 (2) of the Act 
for an extension of time on the ground specified in paragraph 223 (2) (b) of the Act $65 
20 On filing:  
 (a) a request under regulation 22.22 for the exercise of 
discretionary power; or $500 
 (b) a request for a hearing $500 
21 On appearing at a hearing $500 less any amount 
paid under item 11 or 20 in relation to the hearing 
22 On filing a response to the Commissioner’s report under 
section 45 or 48 of the Act, if filed more than 12 months, but 
within 21 months, after the date of the first report on the examination — for each month, or part of a month, after the 12 months, other than a month in respect of which a fee was paid under this item in relation to that examination $65 IP/N/1/AUS/P/6 
Page 308  
 
Column 1 
Item Column 2 
Matter Column 3 
Fee 
23 For supply of  a copy of:  
 (a) a patent specification; or $15 
 (b) a document other than a patent specification; or $10 
 (c) if more than 6 documents of the kind mentioned in 
paragraph (b) are sought from a single source and 
supplied at the same time $60 plus 30 cents per 
page for each 
document in excess of 6 documents 
24 For supply of a certificate by the Commissioner $15 25 On filing a request for information under subregulation 
19.2 (1), other than a request referred to in item 26 or 27 —for 
each application, patent or document $65 
26 On filing a request for a computer printout of information 
under subregulation 19.2 (1) a bout a patent or a patent 
application $10 
27 On filing a request under subregulation 19.2 (2) for 
information that requires an international-type search $800 
28 On filing a request under section 58 of the Act for the result of 
a search made under section 45 or 48 of the Act $65 
29 On filing a substitute page or pages in compliance with a 
direction under subregulation 3.2 (4):  
 (a) within 3 months after the day when the direction was 
given $65 
 (b) after the time specified in paragraph (a) but before the 
application becomes open to public inspection $100 
30 For filing an abstract after the day when a direction was given 
under subregulation 3.4 (5) $65 
31 For taxing costs under subregulation 22.8 (3) $65 
32 On filing an application under subsection 70 (1) of the Act 
for the grant of an extension of the term of a standard patent $400 
33 On filing, within 3 weeks before the due date for publication 
under section 54 of the Act of a notice about a complete specification, a request under subsection 37 (1) of the Act that the complete application be treated as a provisional 
application $1,000 
34 On lodging, within 3 weeks before the due date for 
publication under section 54 of the Act of a notice about a complete specification, a notice of withdrawal of the patent application under section 141 of the Act $1,000 
 
 
Part 3 General fees for international applications  IP/N/1/AUS/P/6 
Page 309 
 
 
 
Column 1  Column 2  Column 3  
Item  Matter  Fee  
1  Transmittal fee under Rule 14 of the PCT  $100  
2  Search fee under Rule 16 of the PCT  $800  
3  Additional fee for search under Artic le 17 (3) (a) of the PCT  $800  
4  Preliminary examination fee under Rule 58 of the PCT  $450  
5  Additional fee for international preliminary examination 
under Article 34 (3) (a) of the PCT  $450  
6  For copy of a document in accordance with Rules 44.3 ( b) or 
71.2 ( b) of the PCT  $15  
7  Confirmation fee under Rule 15.5 ( a) of the PCT  50% of the sum of the 
designation fees 
payable under item 3 of Part 4 in this Schedule for the relevant international 
application    
8 late payment fee under Rule 16
bis.2 of the PCT the greater of: 
(a) 50% of the amount 
of the unpaid fees specified in the invitation; and 
(b) the amount of the 
transmittal fee; 
but not more than the amount of the basic fee 
 IP/N/1/AUS/P/6 
Page 310  
 
Part 4 Fees payable for the benefit of the International Bureau 
 
1 Basic fee for an international application: 65 0 Swiss francs plus, if, the application contains 
more than 30 sheets, 15 Swiss fra ncs for each sheet in excess of 30 
 
2 Designation fee for designations made under Rule  4.9 (a) of the PCT in an international 
application: 
  (i) if the application makes 8 or fewer such designations — 140 Swiss francs per 
designation; 
 
 (ii) if the application makes 9 or more such designations — 1120 Swiss francs  3 Designation fee for each designation (if any) made in an international application under 
Rule 4.9 (b), and confirmed under Rule  4.9 (c), of the PCT: 140 Swiss francs 
 
4 Handling fee: 233 Swiss francs IP/N/1/AUS/P/6 
Page 311 
 
 
Schedule 8 Costs, expenses and allowances  
  (subregulation 20.30 (2) and regulation 22.8) 
 
Part 1  Costs 
Column 1  Column 2  Column 3  
Item  Matter  Amount  
1  Notice of opposition  $65 
2  Statement of grounds and particulars  $400 
3  Receiving and perusing statement of grounds and particulars  $400 
4  Evidence in support  $480 5  Receiving and perusing notice of opposition  $90 6  Receiving and perusing evidence in support  $210 
7  Evidence in answer  $480 
8  Receiving and perusing evidence in answer  $145 9  Evidence in reply  $240 10  Receiving and perusing evidence in reply  $90 11  Preparation of case for hearing  $360 
12  Attendance at hearing by registered patent attorney or solicitor 
without counsel  $180 an hour or 
$810 a day 
13  Attendance at hearing by registered patent attorney or solicitor 
instructing counsel  $145 an hour or 
$650 a day 
14  Counsel fees for attendance at a hearing $240 an hour or 
$1,080 a day
 IP/N/1/AUS/P/6 
Page 312  
 
Part 2  Expenses and allowances  
 
Division 1 Expenses  
 
     1 A person who has paid a fee prescribed in these Regulations in relation to proceedings before 
the Commissioner or the Disciplinary Tribunal may be paid the amount of the fee.  
      2 A person attending proceedings before the Co mmissioner or the Disciplinary Tribunal must 
be paid:  
 
 (a) a reasonable amount for allowances for transport between the usual place of residence 
of the person and the place that he or  she attends for that purpose; and  
  (b) if the person is required to be absen t overnight from his or her usual place of 
residence — a reasonable amount for allowances up to a daily maximum of $405 for 
meals and accommodation.  
 
Division 2 Allowances  
 
     3 A person who, because of his or her professional, scientific or other special skill or 
knowledge, is summoned to appear before the Commissioner or the Disciplinary Tribunal as a 
witness must be paid:  
  (a) if the person is remunerated in his or her occupation by wages, salary or fees — an 
amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or  
 
 (b) in any other case — an amount of not less than $95, or more than $475, for each day 
on which he or she so attends.  
      4 A person summoned to appear before the Commissioner or the Disciplinary Tribunal as a 
witness, other than a witness referred to in clause 3, must be paid:  
 
 (a) if the person is remunerated in his or her occupation by wages, salary or fees — an 
amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; or  
 
 (b) in any other case — an amount of not less than $54, or more than $89, for each day 
on which he or she so attends. IP/N/1/AUS/P/6 
Page 313 
 
 
Notes to the Error! Reference source not found.  
 
Note 1 
 
The Error! Reference source not found.  (in force under the Patents Act 1990 ) as shown in this 
reprint comprise Statutory Rules Error! Reference source not found.  No. 71 amended as indicated 
in the Tables below.   All relevant information pertaining to appli cation, saving or transitional provisions prior 
to 9 December 1997 is not included in th is reprint. For subsequent information see Table A. 
 
Table of Statutory Rules 
 
Year and  
number Date of notification 
in Gazette  Date of 
commencement Application, saving 
or 
transitional 
provisions 
1991 No. 71 26 Apr 1991 30 Apr 1991  
1991 No. 456 19 Dec 1991 Rr. 3, 5 and 7: 1 Jan 1992  
Remainder: 19 Dec 1991 — 
1992 No. 148 9 June 1992 R. 5: 9 June 1992 
Remainder: 1 July 1992 R. 7 
1993 No. 113 3 June 1993 1 July 1993 R. 9 
1993 No. 227 26 Aug 1993 Rr. 3.1, 4.1 and 4.4:  
1 Oct 1992 
Remainder: 1 Jan 1993 — 
1993 No. 340 10 Dec 1993 10 Dec 1993 R. 8 
1993 No. 341 10 Dec 1993 1 Jan 1994 — 1994 No. 182 16 June 1994 29 June 1994 — 1994 No. 317 6 Sept 1994 1 Oct 1994 R. 10 1994 No. 387 21 Nov 1994 Rr. 9 and 10: 30 May 1995 
Remainder: 21 Nov 1994 R. 10 
1995 No. 16 14 Feb 1995 R. 38: 30 Apr 1991 
Remainder: 14 Feb 1995 R. 45  
1995 No. 20 22 Feb 1995 23 Feb 1995 — 
1995 No. 82 9 May 1995 Rr. 4–9, 11.2 and 12–14:  
1 July 1995 
Remainder: 9 May 1995 R. 14 
1995 No. 427 22 Dec 1995 1 Jan 1996 — 
1996 No. 271 11 Dec 1996 11 Dec 1996 —  1997 No. 192 4 July 1997 4 July 1997 — 1997 No. 345 9 Dec 1997 Rr. 3, 4, 8–10, 13 and 14:  
1 Jan 1998 
Remainder: 9 Dec 1997 R. 3 [ see Table A] 
1998 No. 45 25 Mar 1998 25 Mar 1998 — 
1998 No. 56 8 Apr 1998 8 Apr 1998 Rr. 13–17 [ see 
Table A] 
1998 No. 141 25 June 1998 Rr. 3–5: 1 July 1998 
Remainder: 25 June 1998 — 
1998 No. 241 31 July 1998 31 July 1998 — 
1998 No. 257 12 Aug 1998 12 Aug 1998 — 1998 No. 264 26 Aug 1998 Rr. 7.1, 7.2 and 7.4:  
1 Nov 1998 
Remainder: 26 Aug 1998 — 
1998 No. 291 7 Sept 1998 7 Sept 1998 — 
1998 No. 319 1 Dec 1998 (a) — 
1998 No. 342 22 Dec 1998 1 Jan 1999 — IP/N/1/AUS/P/6 
Page 314  
 
Year and  
number Date of notification 
in Gazette  Date of 
commencement Application, saving 
or transitional provisions 
1998 No. 345 22 Dec 1998 27 Jan 1999 — 
1999 No. 154 14 July 1999 14 July 1999 — 
1999 No. 184 1 Sept 1999 Rr. 1–3 and Schedule 1:  
1 Sept 1999  
Remainder: 6 Sept 1999 — 
1999 No. 261 27 Oct 1999 Rr. 1–4 and Schedule 1:  
27 Oct 1999 
Remainder: 1 Jan 2000  R. 4 [ see Table A] 
1999 No. 349 22 Dec 1999 Rr. 1–3 and Schedule 1:  
22 Dec 1999 
Remainder: 1 Jan 2000  — 
2000 No. 317 29 Nov 2000 Rr. 1–3 and Schedule 1:  
29 Nov 2000 Schedule 2: 1 Jan 2001 
Schedule 3: 1 Mar 2001 — 
 
(a) Regulation 2 of Statutory Rules 1998 No. 319 provides as follows: 
   These Regulations commence on the commencement of Schedule 1 to the Intellectual 
Property Laws Amendment Act 1998 . 
 
 Schedule 1 of the Intellectual Property Laws Amendment Act 1998  commenced 
on 27 January 1999. IP/N/1/AUS/P/6 
Page 315 
 
 
Table of Amendments 
 ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
R. 1.1............................... rs. 1998 No. 257 
R. 1.3............................... am. 1998 No. 345 
R. 1.4............................... am. 1991 No. 456; 1992 No. 148; 1993 Nos. 227 and 341  
 rs. 1995 Nos. 16 and 427  am. 1997 No. 345; 1998 Nos. 141 and 342; 1999 No. 349 
R. 1.5............................... am. 1995 No. 16 R. 1.6............................... am. 1995 No. 16; 2000 No. 317 Rr. 2.2, 2.3 ...................... am. 1995 No. 16 R. 2.4............................... rs. 1995 No. 16 R. 2.7............................... am. 1995 No. 16 Rr. 3.1, 3.2 ...................... am. 1995 No. 16; 2000 No. 317 Rr. 3.3, 3.4 ...................... am. 1995 No. 16 R. 3.5............................... am. 2000 No. 317 R. 3.8............................... rs. 1995 No. 16 R. 3.12............................. am. 1995 No. 16 Rr. 3.18, 3.19................... am. 1995 No. 16 Rr. 3.21–3.25................... am. 1995 No. 16 R. 3.30............................. am. 1995 No. 16 R. 4.2............................... am. 1995 Nos. 16 and 82 R. 4.3............................... am. 1995 No. 16; 1998 No. 45; 1999 No. 261 R. 5.1............................... am. 1995 Nos. 16 and 82; 1997 No. 192; 1998 No. 319 R. 5.3............................... am. 1995 Nos. 16 and 82; 1998 No. 319 R. 5.3A............................ ad. 1995 No. 16 R. 5.4............................... am. 1993 No. 113; 1995 No. 82 R. 5.8............................... am. 1995 Nos. 16 and 82 R. 5.9............................... am. 1995 No. 16; 2000 No. 317 R. 5.10............................. am. 1993 Nos. 113 and 340; 2000 No. 317 R. 5.13............................. am. 1995 No. 16 Heading to Part 1 of ........ 
Chapter 6 ad. 1998 No. 319 
R. 6.3............................... am. 1999 No. 261 
R. 6.7............................... am. 1995 No. 16 
 rep. 1995 No. 82 
Part 2 of Chapter 6 .......... 
(rr. 6.7–6.11) ad. 1998 No. 319 
Rr. 6.7–6.11 .................... ad. 1998 No. 319 
R. 8.1............................... am. 1995 No. 16 R. 8.1A............................ ad. 1999 No. 184 R. 8.2............................... am. 1995 No. 16 R. 8.3............................... am. 1995 No. 16; 1999 No. 261 R. 8.4............................... am. 1995 No. 16 R. 8.6............................... am. 1995 No. 16; 2000 No. 317 R. 9.4............................... am. 1995 No. 16 R. 10.1............................. am. 1995 No. 16 R. 10.2............................. am. 1995 No. 16; 2000 No. 317 R. 10.3............................. am. 1997 No. 345 R. 10.5............................. am. 1995 No. 16 R. 10.6............................. rs. 1995 No. 16 R. 11.1............................. am. 1997 No. 345 R. 13.3............................. am. 1994 No. 317; 1998 No. 264 Notes 1, 2 to r. 13.3......... ad. 1998 No. 264 R. 13.4............................. rs. 1995 No. 16 
am. 2000 No. 317 IP/N/1/AUS/P/6 
Page 316  
 
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
R. 13.6............................. am. 1994 No. 317; 1995 No. 82; 1998 Nos. 264 and 319 
Notes 1, 2 to r. 13.6......... ad. 1998 No. 264 
R. 15.3............................. am. 1995 No. 16 R. 17.2............................. am. 1995 No. 16 R. 19.2............................. am. 1995 No. 16 R. 20.1............................. am. 1994 No. 387; 1998 Nos. 56 and 345 R. 20.2............................. rs. 1998 No. 56 Rr. 20.2A, 20.2B............. ad. 1998 No. 345 R. 20.3............................. rs. 1998 No. 345 R. 20.3A.......................... ad. 1998 No. 345 Rr. 20.4, 20.5................... am. 1998 No. 345 Heading to r. 20.6............ rs. 1998 No. 345 R. 20.6............................. am. 1998 No. 345 R. 20.7............................. rs. 1998 No. 345 Heading to r. 20.8............ rs. 1998 No. 345 R. 20.8............................. am. 1998 No. 345 Heading to r. 20.9............ rs. 1998 No. 345 R. 20.9............................. am. 1998 No. 345; 1999 No. 154 Heading to r. 20.10.......... rs. 1998 No. 345 R. 20.10 .......................... am. 1998 No. 345 R. 20.11........................... rs. 1998 No. 345 Heading to r. 20.12.......... rs. 1998 No. 345 Rr. 20.12–20.14............... am. 1998 No. 345 Heading to r. 20.15.......... rs. 1998 No. 345 R. 20.15........................... am. 1998 No. 345 R. 20.16........................... am. 1995 No. 16 
 rs. 1998 No. 345 
Heading to Div. 3 of........ 
Part 2 of Chapter 20 rs. 1998 No. 345 
Rr. 20.17, 20.18............... am. 1998 No. 345 
R. 20.19........................... am. 1998 No. 345; 1999 Nos. 184 and 349 R. 20.19A........................ ad. 1998 No. 345 
 am. 1999 No. 349 
R. 20.20........................... am. 1998 No. 345 Heading to r. 20.21.......... rs. 1998 No. 345 Rr. 20.21–20.23............... am. 1998 No. 345 R. 20.25........................... am. 1998 No. 345 Rr. 20.29, 20.30............... am. 1998 No. 345 Heading to Div. 1 of........ 
Part 5 of Chapter 20 rs. 1998 No. 56 
Heading to r. 20.32.......... rs. 1998 No. 345 
R. 20.32........................... am. 1994 No. 387; 1995 No. 82 
 rs. 1998 No. 56  am. 1998 No. 345 
R. 20.33........................... rep. 1998 No. 56 R. 20.34........................... rs. 1998 Nos. 56 and 345 R. 20.35 .......................... rs. 1998 No. 56 R. 20.36........................... rep. 1998 No. 56 Rr. 20.37, 20.38............... am. 1994 No. 387 Rr. 20.39, 20.40............... am. 1994 No. 387 
 rs. 1998 No. 56 
Heading to Div. 2 of........ 
Part 5 of Chapter 20 rs. 1998 No. 345 
R. 20.41........................... am. 1998 No. 345 
R. 20.43........................... am. 1997 No. 345 R. 21.1............................. am. 1999 No. 184 IP/N/1/AUS/P/6 
Page 317 
 
 
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
R. 21.2............................. ad. 1994 No. 182 
 rs. 1998 No. 257; 1999 No. 184 
R. 22.1............................. am. 1998 Nos. 241 and 342 R. 22.2............................. am. 1991 No. 456; 1993 No. 113; 1994 No. 317; 1997 No. 345 R. 22.2A.......................... ad. 1998 No. 241 R. 22.3............................. am. 1995 No. 16 R. 22.4............................. am. 1995 Nos. 16 and 427; 1998 No. 342 Rr. 22.5–22.7................... am. 1995 No. 16 R. 22.7A.......................... ad. 1993 No. 340 R. 22.8............................. am. 1993 No. 340; 1995 No. 16 R. 22.11........................... am. 1993 No. 113; 1995 No. 82;  1998 Nos. 241 a nd 264; 1998 No. 
319 
R. 22.13........................... am. 1995 No. 16 R. 22.15........................... am. 1995 No. 16 
 rs. 1998 No. 141 
R. 22.20........................... am. 1995 No. 16 R. 22.23........................... am. 1995 No. 16 R. 22.26........................... am. 1995 No. 16; 1 998 Nos. 45, 291 and 345 
R. 23.3............................. am. 1995 No. 16 R. 23.4............................. am. 1995 Nos. 16 and 82 R. 23.8............................. am. 1995 No. 16 R. 23.9............................. am. 1994 No. 317 R. 23.10........................... am. 1994 No. 317; 1995 No. 16; 1997 No. 345 R. 23.11........................... am. 1995 No. 16 R. 23.14........................... am. 1995 No. 16 Rr. 23.17, 23.18............... am. 1995 No. 16 R. 23.20........................... am. 1995 No. 16 R. 23.25........................... am. 1995 No. 16 Rr. 23.27–23.31............... ad. 1998 No. 345 Schedule 1....................... am. 1995 No. 16 Heading to Schedule 1A . ad. 1995 No. 16 Schedule 1A.................... am. 1995 No. 16 Schedule 2....................... am. 1991 No. 456 
 rs. 1992 No. 148  am. 1993 Nos. 227 and 341; 1995 No. 16 
Heading to Schedule 2A . ad. 1995 No. 16 Schedule 2A.................... am. 1995 Nos. 16 and 427; 1997 No. 345 
 rs. 1998 No. 141  am. 1998 No. 342; 1999 No. 349; 2000 No. 317 
Schedule 3....................... am. 1995 No. 16; 1998 No. 141; 2000 No. 317 
Schedule 4....................... rs. 1991 No. 456 
 am. 1992 No. 148  rs. 1993 No. 340  am. 1994 No. 182; 1995 Nos. 20 and 427  rs. 1996 No. 271; 1997 No. 345  am. 1998 Nos. 257 and 342; 1999 No. 349 
Schedule 5....................... am. 1994 No. 387 
 rs. 1998 No. 345 
Schedule 6....................... am. 1998 No. 345 Schedule 6A.................... ad. 1994 No. 182 
 rs. 1997 No. 192  am. 1997 No. 345  rs. 1998 No. 257  rep. 1999 No. 184 
Schedule 7....................... am. 1991 No. 456 
 rs. 1992 No. 148  am. 1993 Nos. 113 and 340; 1994 No. 317; 1995 Nos. 16, 82 and 
427; 1997 Nos. 192 and 345; 1998 Nos. 264, 319, 342 and 345; 1999 Nos. 261 and 349; 2000 No. 317 IP/N/1/AUS/P/6 
Page 318  
 
ad. = added or inserted      am. = amended      rep. = repealed      rs. = repealed and substituted 
Provision affected How affected 
Schedule 8....................... am. 1992 No. 148 
 rs. 1993 No. 113 
 am. 1993 No. 340; 1994 No. 317; 1998 No. 345; 1999 No. 184  
 IP/N/1/AUS/P/6 
Page 319 
 
 
Table A Application, saving or transitional provisions 
 Statutory Rules 1997 No. 345 
 
3 Application to certain applications 
 
3.1 The amendment of Part 4 of Schedule 7 of the Patents Regulations by regulation 14 of these 
Regulations applies only to an international a pplication filed on or after 1 January 1998. 
3.2  
_______________ 
 
Statutory Rules 1998 No. 56 
 
13 Definitions 
 
13.1 In this Part: 
 
 new Board  means the Professional Standards Board for Patent and Trade Marks Attorneys 
established under Chapter 20 of the Patents Re gulations as amended by these Regulations. 
 
 old Board  means the Patent Attorneys Professional Standards Board: 
 
 (a) established under Chapter 20 of the Patent s Regulations before the commencement of 
these Regulations; and 
  (b) as constituted at any time before the commencement of these Regulations. 
 
14 Continuing effect of certain applications 
 
     14.1 This regulation applies to an applica tion (including anything accompanying the application) 
made in accordance with regulation 20.2 of the Patents Regulations if: 
 
 (a) the application was made before th e commencement of these Regulations; and  
  (b) anything that could have been done by the old Board under Chapter 20 of the Patents 
Regulations in relation to the application ( unfinished business ) was not done before 
the commencement of these Regulations. 
 
     14.2 The application is ta ken to have been made in accordance with regulation 20.2 of the Patents 
Regulations as amended by these Regulations. 
      14.3 The unfinished business may be finished  by the new Board in acco rdance with Chapter 20 of 
the Patents Regulations as amended by these Regulations. 
 
15 Continuing effect of decisions of old Board 
 
     15.1 This regulation applies to any act done , or decision made, by the old Board under Chapter 20 
of the Patents Regulations as am ended and in force at any time before the commencement of 
these Regulations. 
      15.2 The act or decision has effect as if th e act had been done, or decision had been made, by the 
new Board. 
 IP/N/1/AUS/P/6 
Page 320  
 
16 Continuing effect of certificates 
 
     16.1 This regulation applies to each certif icate given by the old Board under Chapter 20 of the 
Patent Regulations as amended and in force at any time before the commencement of these Regulations. 
 
     16.2 The certificate is as valid as it would be if it had been given by the new Board.  
17 Continuing effect of certain complaints 
      17.1 This regulation applies to a complain t in writing to the old Board made under Part 4 of 
Chapter 20 of the Patents Regulations as amended and in force at any time, if: 
  (a) the complaint was made before th e commencement of these Regulations; and 
 
 (b) anything that could have been done by the old Board in relation to the complaint 
under the Part ( unfinished business ) was not done before the commencement of 
these Regulations. 
     17.2 The unfinished business may be finished  by the new Board in accordance with Part 4 of 
Chapter 20 of the Patents Regulations. 
 
     17.3 Any reply or further information s ought by the old Board under regulation 20.20 of the 
Patents Regulations, but not given to the ol d Board before the commencement of these 
Regulations must be given to the new Board in accordance with regulation 20.20 as if the 
reply or further information had been sought by the new Board. 
 
_______________ 
 
 
Statutory Rules 1999 No. 261 
 
4 Transitional 
 
 Paragraphs 6.3 (ea) and (eb) as substituted by  these Regulations do not apply to a patent or 
patent application for which, before th e commencement of these Regulations, the 
Commissioner extended the time for making an application under section 38 or 94 of the Act. IP/N/1/AUS/P/6 
Page 321 
 
 
 
 
Patents Amendment Regulations 2001 (No. 1)1 
 
Statutory Rules 2001 No. 982 
__________________________________________________________________________________ 
 I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council,  make the following Regulations under the Patents Act 
1990 and the Patents Amendment (Innovation Patents) Act 2000. 
 Dated 16 May 2001   
 
 
WILLIAM DEANE 
Governor-General 
By His Excellency’s Command  
 
  WARREN ENTSCH Parliamentary Secretary to the Minister for Industry, 
Science and Resources IP/N/1/AUS/P/6 
Page 322  
 
1 Name of Regulations 
 
  These Regulations are the Patents Amendment Regulations 2001 (No. 1) . 
 
2 Commencement 
 
  These Regulations commence on the commencement of the Patents Amendment 
(Innovation Patents) Act 2000 . 
 
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
 
Schedule 1 Amendments 
  (regulation 3) 
 [1] Subregulation 1.3 (1), definition of acceptance , paragraph (b) 
 
     substitute 
 
 (b) in relation to a patent request and comple te specification relating to an application for 
an innovation patent — acceptance of the pa tent request and complete specification 
under section 52 of the Act. 
 
[2] Subregulation 1.3 (4) 
 
     substitute 
 
 (4) Subject to subregulation (5), if the Commissioner or the Patent Office gives a 
document to a person, the document is taken to have been given to the person on the 
day on which the document is dated by the Commissioner or the Office, unless the contrary intention appears. 
 
 (5) If: 
               (a) the Commissioner or the Patent Office makes a document available 
electronically for a person; and  
 
              (b) sends a notice to the pe rson telling them that the document is available for 
them to collect electronically; 
  the document is taken to have been given to the person on the day on which the notice 
is dated by Commissioner or the Office, unless the contrary intention appears. 
  (6) A requirement in these Regulations to give information to the Commissioner or to 
another person (whether the expression ‘give’, ‘tell’, ‘inform’ or another expression is 
used) is a requirement to give the informa tion in writing, unless the contrary intention 
appears. 
  (7) For these Regulations, a period expressed in months is to be worked out in the way 
described in rule 80.2 of the Regulations  under the Patent Cooperation Treaty set out 
in Schedule 2A. 
 IP/N/1/AUS/P/6 
Page 323 
 
 
[3] Regulation 1.5 
 
     substitute 
 
     1.5 Deposit requirements: prescribed period 
 
 (1) For paragraph 6 (c) of the Act, the prescribed period is:                (a) if the Commissioner makes a declaration under subsection 42 (1) of the Act 
in relation to the specification concerned — the period mentioned in 
subregulation (2); or 
               (b) in any other case:                            (i) for a complete specification in respect of a standard patent 
application — the period mentione d in subregulation (3); or 
                           (ii) for a complete specification in r espect of an innovation patent 
application — the period menti oned in subregulation (4). 
  (2) For paragraph (1) (a), the period begins on the filing date of the application to which 
the specification relates and ends 3 months fro m the date taken to be the date of filing 
of the specification under paragraph 42 (2) (b) of the Act. 
  (3) For subparagraph (1) (b) (i), the period be gins on the filing date of the application to 
which the specification relates and ends: 
 
              (a) at the end of the da y immediately before the day on which the application 
becomes open to public inspection; or 
               (b) if the application is accepted before the end of the day first mentioned in 
paragraph (a) — immediately before acceptance. 
 
 (4) For subparagraph (1) (b) (ii), the period be gins on the filing date of the application to 
which the specification relates to and ends immediately before acceptance.   
  (5) If a matter mentioned in paragraph 6 (c) of the Act has been included in the 
specification, the applicant or patentee is ta ken to consent to a micro-organism being 
obtained by a person to whom the Commiss ioner has granted the certification under 
regulation 3.25 in respect of the deposit: 
               (a) after the period mentione d in subregulation (1) for the specification to which 
the application relates; and 
 
              (b) from the prescribed depos itary institution with which the micro-organism is 
deposited. 
 
[4] Subregulation 1.6 (1) 
 
     after 
     
 Convention application       insert IP/N/1/AUS/P/6 
Page 324  
 
  for a standard patent  
[5] After subregulation 1.6 (1A) 
 
     insert 
 
 (1B) For section 8 of the Act, the prescribed period for a Convention application for an 
innovation patent is: 
 
             (a) for documents to which paragraph 8 (a) of the Act applies — the period from 
the date of making the application based on the basic application to 
immediately before the Commissioner decides to certify the patent; or 
              (b) for documents to which paragraph 8 (b) of the Act applies: 
 
                           (i) if th e patent has been certified — 3 months from the date on which 
the Commissioner requests the translation; or 
                            (ii) if the patent has not been certified — the period from the date on 
which the Commissioner requests the translation to immediately 
before the Commissioner deci des to certify the patent. 
 
[6] Subregulation 2.2 (3) 
 
     substitute 
  (3) Paragraphs (2) (a) and (b) are prescribed circumstances only if: 
               (a) at the time the application is made for a patent for the invention, the applicant 
has filed a notice stating that the invention has been exhibited; and 
 
              (b) the applicant has filed a statement issued by the authority responsible for the 
exhibition in which: 
                            (i) the invention and the exhibition are identified; and  
   (ii) the date of the opening of the exhibition is given; and 
                            (iii) if the first disclosure of the invention during the exhibition did not 
take place on that date — the date of that disclosure. 
  (4) For paragraph (3) (b), the statement must be filed: 
 
              (a) for an application for a standard patent — before  the complete specification 
in respect of the application is open to public inspection; or 
               (b) for an application for an innovation patent — within 6 months from the filing 
date of the complete specification in respect of the application. 
 IP/N/1/AUS/P/6 
Page 325 
 
 
[7] Regulations 2.6 and 2.7 
 
     substitute 
 
 2.6 Prescribed period: notification of a ssertion of invalidity of innovation patent 
 
  For subsection 28 (2) of the Act, the prescr ibed period for an innovation patent is the 
period from the date that the complete specification for the patent becomes open to public inspection to immediately before the Commissioner decides to certify the 
patent. 
 
 2.7 Documents to accompany notice of assertion of invalidity 
 
  Notice of an assertion under subsection 27 (1) or 28 (1) of the Act must, if the 
assertion is based on a document, have with it: 
 
  (a) a copy of the document; and    (b) if the document is not in English, a copy of:     (i) a translation of the document into English; and 
 
   (ii) a related certificate of verification; and    (c) evidence of the date and place of publication of the document.   [8] Subregulation 3.1 (2) 
 
     after 
 
 complete application       insert 
 
 for a standard patent 
 
[9] Paragraph 3.1 (2) (f) 
 
     omit 
 
 subsection 36 (3) of the Act (“other applications by eligible persons”)  
 
     insert 
 
 subsection 36 (4) of the Act 
 IP/N/1/AUS/P/6 
Page 326  
 
[10] After regulation 3.1 
 
     insert 
 
 3.1A Applicant taken to be nominated person 
 
  For an application for a standard patent or an innovation patent, the applicant is taken 
to be the nominated person.  
 
[11] Regulation 3.2 
 
     substitute 
 
 3.2 Provisional specifications 
   A provisional specification must be in the approved form. 
 
 3.2A Specifications: standard patents 
 
      (1) A complete specification for a standard patent must: 
 
  (a) be in the approved form; and 
   (b) be in English; and    (c) comply substantially with the requirements of Schedule 3. 
 
      (2) If the Commissioner treats a comple te specification for a standard patent as having 
been filed, the Commissioner may, within 1 month from the date of filing of the specification, direct the applicant to do anything necessary to ensure that the 
specification complies with the requirements mentioned in subregulation (1). 
 
  N o t e    See regulation 3.5 for what happens if certain information required for an application is not filed. 
 
      (3) The complete application to which the complete specification relates lapses if an 
applicant to whom a direction has been given does not comply with the direction 
before: 
               (a) if subregulation (4) app lies — the end of the period specified in the direction 
under paragraph (4) (b); or 
 
  (b) in any other case — the later of: 
                            (i) the end of 3 months from the day on which the direction was given; 
and 
 
                          (ii) the day on which the specification becomes open to public 
inspection. 
       (4) This subregulation applies if:                (a) the direction is given to assist the Commissioner in deciding whether a filed 
abstract is in accordance with these Regulations; and IP/N/1/AUS/P/6 
Page 327 
 
 
              (b) the Commissioner has specified in the direction a period of not less than 1 
month within which the applicant must comply with the direction. 
       (5) If an application lapses under  subregulation (3), the Commissioner must: 
 
  (a) advertise that fact in the Official Journal ; and 
   (b) tell the applicant of the lapse.  
 3.2B Specifications: formalities check for innovation patents 
 
      (1) For section 52 of the Act, a comple te application for an innovation patent passes the 
formalities check only if the application meets all of the following requirements: 
   (a) the complete specification for the application must:  
 
   (i) be in the approved form; and     (ii) be in English; and     (iii) comply substantially with  the requirements of Schedule 3; 
 
  (b) the patent request must be in the approved form;                 (c) if the applicant is an eligible person under section 34 of the Act — a copy of 
the court order declaring that the applican t is an eligible person in relation to 
the invention must be filed with the complete application;  
               (d) the complete application must comply with regulation 3.8, 3.10, 6A.1 or 
subregulation 8.5 (2), or subsection 79C (2) of the Act, if applicable;  
                (e) if the applicant is relying on section 41 of the Act — the receipts mentioned 
in paragraph 3.1 (2) (c) must be file d with the complete application;  
                (f) the complete specification must not be a cross-reference to an earlier patent 
application filed in Australia or in a Convention country;  
 
              (g) the complete specificati on must not contravene subs ection 18 (2) or (3) of the 
Act. 
       (2) If the application does not meet a requi rement mentioned in paragraph (1) (a), (b), (c), 
(d), (e) or (f), the Commissioner must dir ect the applicant to do anything necessary to 
ensure that the application meets the requirement. 
 
      (3) If an applicant to whom a direction under subregulation (2) has been given does not 
comply with the direction within 2 months from the date of the direction, the application lapses. 
 
      (4) If the application does not meet the requirement mentioned in paragraph (1) (g), the 
Commissioner must direct the applicant to  ensure that the application meets the 
requirement. 
 IP/N/1/AUS/P/6 
Page 328  
 
      (5) If an applicant to whom a direction under subregulation (4) has been given does not 
respond to the direction within 2 months from the date of the direction, the application lapses. 
       (6) If an applicant to whom a direction under subregulation (4) has been given does not 
comply with the direction within 4 months from the date of the direction, the 
application lapses. 
       (7) If an application lapses under subr egulation (3), (5) or (6), the Commissioner must: 
 
  (a) advertise that fact in the Official Journal ; and 
   (b) tell the applicant of the lapse.  
[12] Regulations 3.5 and 3.6  
 
     substitute 
 
 3.5 Filing date 
 
      (1) Subject to this regulation, the filing date of a patent application is the date on which 
the following information is filed: 
               (a) information in English th at indicates that what is filed is intended to be an 
application for a patent;  
 
              (b) information that allows  the identity of the applicant to be established or 
allows the applicant to be c ontacted by the Patent Office; 
   (c) information that appears to be a description.        (2) For paragraph (1) (c), a description: 
 
  (a) does not have to be in English; and    (b) may be a drawing; and  
              (c) may be a reference, in  English, to an earlier patent application filed in 
Australia or in a Convention country. 
       (3) For paragraph (2) (c), the earlier pate nt application does not have to be in English. 
       (4) If all of the information mentioned in  subregulation (1) is not filed in respect of an 
application, the Commissioner must give the applicant notice in writing:  
              (a) telling the applicant that all of the information ment ioned in subregulation (1) 
was not filed in respect of the application; and 
 
             (b) asking the applicant to file the additional information required. 
       (5) If an applicant to whom a notice under subregulation (4) has been given does not file 
the additional information within 2 months fro m the date of the notice, the application 
is taken not to have been filed. 
 IP/N/1/AUS/P/6 
Page 329 
 
 
      (6) Subregulation (7) applies if an a pplicant to whom a notice under subregulation (4) has 
been given files the additional information within 2 months from the date of the notice. 
       (7) For section 30 of the Act, the filing da te of the patent application is the date on which 
the additional information is filed. 
 
 3.5A Filing date: incomplete specifications 
 
      (1) This regulation applies if the inform ation mentioned in subregulation 3.5 (1) has been 
filed in respect of a patent application but a part of the patent specification is missing. 
       (2) If the Commissioner notices that a part of the specification is missing, the 
Commissioner must give the applicant notice in writing: 
 
  (a) telling the applicant that a part of the specification is missing; and 
   (b) asking the applicant to file the missing part.        (3) The missing part must be incorpor ated into the specification if, within the period 
applying under subregulation (4), the applicant: 
 
  (a) files the missing part; or                            (b) if the appli cant claims priority from an earlie r basic application or associated 
provisional application — files: 
 
   (i) the missing part; and                             (ii) a copy of the earlier application that contains, and indicates the 
location of, the missing part; and 
 
   (iii) a translation of the earlier application if it is not in English. 
       (4) For subregulation (3), the period is:                (a) if a notice is given un der subregulation (2) — 2 months from the date of the 
notice; or 
   (b) in any other case — 2 months from the filing date.        (5) For section 30 of the Act, the filing date of the application is:  
              (a) if paragraph (3) (a) app lies — the date on which the missing part is filed; and 
               (b) if paragraph (3) (b) applie s — the date that would have been the filing date if 
the missing part had not been incorporated. 
 
      (6) If paragraph (5) (a) applies, the Commissioner must tell the applicant of the new 
filing date. 
       (7) Despite paragraph (5) (a), if within 1 month after being told of the new filing date, the 
applicant withdraws the missing part from the specification, the filing date of the IP/N/1/AUS/P/6 
Page 330  
 
application, for section 30 of the Act, is the date that would have been the filing date 
if the missing part had not been incorporated. 
 
 3.5B Filing of documents outside business hours 
   The Patent Office and each sub-office of  the Patent Office may provide facilities for 
the filing of documents when the Office or sub-office is not open to the public for business. 
 
 3.6 Requests to make determinations between interested parties 
 
  For section 32 of the Act, a request must:    (a) be in the approved form; and  
              (b) have with it a notice, by the person making the request, stating the grounds 
on which the request is made. 
 
[13] Paragraph 3.8 (a) 
 
     substitute 
 
              (a) in the case of an appli cation of the kind described in section 33 of the Act — 
within 3 months of the decision of the Commissioner referred to in paragraph 33 (1) (c), (2) (c), (3) (c) or (4) (b) of the Act, as the case requires; or 
 
[14] Regulation 3.9 
 
     substitute 
 
 3.9 Prescribed period: treatment of complete application as provisional 
 
  For subsection 37 (1) of the Act, the prescribed period is:                (a) for an application for a standard patent — the period from the date of filing of 
the complete application until the earlier of: 
 
                           (i) the end of 12 months from the filing date of the complete application; 
and 
                            (ii) the day that is 3 weeks before the due date for publishing a notice 
under section 54 of the Act; and 
 
              (b) for an application fo r an innovation patent — 12 mo nths from the filing date 
of the complete application. 
 
[15] Regulation 3.11 
 
     omit 
 
 IP/N/1/AUS/P/6 
Page 331 
 
 
[16] Paragraph 3.12 (1) (c) 
 
     substitute 
 
              (c) if the specification is a complete specification filed in respect of a divisional 
application under section 79B of the Act and the claim is fairly based on 
matter disclosed in the specification refe rred to in paragraph 79B (1) (a) of 
the Act — the date mentioned in subregulation (2C); 
              (d) if the specification is a complete specification filed in respect of a divisional 
application under section 79C of the Act and: 
                            (i) the claim is fairly based on matter disclosed in the specification 
referred to in subsection 79C (1) of the Act; and 
 
                           (ii) examination of the divisional application is requested within 2 
months from the date of the grant of the divisional application; 
   the date mentioned in subregulation (2D).  
[17] Subregulation 3.12 (3) 
 
     substitute 
 
 (2C) The date for a specification to which pa ragraph 3.12 (1) (c) applies is the date that 
would have been the priority date of the claim if it had been included in the 
specification referred to in para graph 79B (1) (a) of the Act. 
 
 (2D) The date for a specification to which pa ragraph 3.12 (1) (d) applies is the date that 
would have been the priority date of the claim if it had been included in the 
specification referred to in subsection 79C (1) of the Act. 
  (3) For paragraphs 3.12 (1) (c) and (d), a claim is not fairly based on the specification 
referred to in paragraph 79B (1) (a) or the sp ecification of the first patent referred to 
in subsection 79C (1) of the Act if, in order to comply with paragraph 40 (2) (a) of the 
Act, the deposit requirements must be sa tisfied and on the date of making the 
divisional application: 
 
              (a) the requirement specified  in paragraph 6 (a) of the Act is not satisfied in 
relation to the specification referred to  in paragraph 79B (1) (a) or the 
specification of the first patent referred to in subsection 79C (1) of the Act; or 
              (b) the period prescribed in subregulation 1.5 (1) has ended and the requirements 
of paragraph 6 (c) of the Act are not satisfied in relation to the specification 
referred to in paragraph 79B (1) (a) or  the specification of the first patent 
referred to in subsection 79C (1) of the Act. 
 
[18] Regulation 3.13 
 
     substitute 
 
     3.13  Priority dates: certain persons and applications 
 
      (1) This regulation applies if, under subsection 36 (1) of the Act: 
 IP/N/1/AUS/P/6 
Page 332  
 
              (a) the Commissioner d eclares a person to be an eligible person; and 
               (b) the person makes a complete application under section 29 of the Act.        (2) The priority date of a claim of the sp ecification in respect of that application, being a 
claim that is fairly based on matter disclosed in the specification referred to in 
paragraph 36 (1) (c) of the Act and re ferred to in the declaration, is: 
               (a) if that specification is a complete specification — the priority date of the 
claim or the date that would have been the priority date of the claim if the 
claim had been a claim of the specification; and 
               (b) if that specification is a provisional specification — the date of filing of the 
provisional specification. 
 [19] Paragraph 3.16 (1) (c) 
 
     omit 
 
 consideration of an application for a petty patent.       insert 
 
 examination of an innovation patent.  
[20] Subregulation 3.18 (1) 
 
     omit 
 
[21] Subregulation 3.18 (2) 
 
     omit 
 
 paragraph 45 (1) (c) or 48 (1) (b)  
     insert 
  paragraph 45 (1) (d) or 48 (1) (c) 
 
[22] Subparagraph 3.18 (2) (a) (iv) 
 
     substitute 
    (iv) section 79B (divisional appli cations prior to grant of patent); 
 
[23] Paragraph 3.18 (2) (c) 
 
     omit 
 
 section 51  IP/N/1/AUS/P/6 
Page 333 
 
 
     insert 
 
 section 50  
[24] Subregulation 3.18 (3) 
 
     omit 
 
 paragraph 48 (1) (b)       insert 
 
 paragraph 48 (1) (c)  
[25] Regulation 3.19, heading 
 
     substitute 
 
 3.19 Conduct of examination: standard patents 
 [26] Subregulation 3.19 (3) 
 
     omit 
 
 section 45 (“examination”) or section 48 (“modified examination”)       insert 
 
 section 45 or 48  
[27] Regulation 3.22 
     omit 
 
[28] Subregulation 3.23 (1) 
 
     omit 
  section 41 of the Act (“specifications: micro-organisms”), the following documents must be 
filed in relation to an application that h as been accepted under section 49 (“acceptance of 
patent request: standard patent ”) or 50 (“consideration and accep tance of patent request: petty 
patent”) of the Act  
 
     insert 
 
 section 41 of the Act, the following documents must  be filed in relation to an application that 
has been accepted under section 49 or 52 of the Act  
 
[29] Subregulation 3.25 (3) 
 
     substitute 
 
 (3) If the application is for a standard pate nt, the applicant may, at any time before the 
specification relating to the application is open for public inspection, notify the IP/N/1/AUS/P/6 
Page 334  
 
Commissioner that a sample of the deposited micro-organism is only to be provided 
in a period mentioned in subregul ation (3A) to a person who is: 
               (a) a skilled addressee without an interest in the invention; and  
  (b) nominated by the person who made the request. 
     (3A) For subregulation (3), the period is:    (a) before the patent is granted on that application; or 
 
  (b) before the application has la psed or been withdrawn or refused. 
 
[30] Subparagraphs 3.25 (4) (c) (i) and (ii) 
 
     substitute 
 
                          (i) opposition proceedings under Chapter 5 of the Act in relation to the 
grant of a standard patent on that application; or 
                           (ii) oppositi on proceedings under section 101M  of the Act in relation to 
an innovation patent; or 
 
[31] Paragraph 4.2 (2) (c) 
 
     omit 
 
 subregulation 3.2 (4) (“specifications”)  
     insert 
 
 subregulation 3.2A (2) 
 
[32] Subparagraphs 5.1 (a) (iii) and (iv) 
 
     substitute 
    (iii) section 101M (oppositi on to innovation patent);  
                            (iv) s ubsection 104 (4) (amendments by ap plicants and patentees), unless 
the request for leave to amend is in response to a direction of the Commissioner under section 106 (amendments directed by Commissioner: patents) or section 107 (amendments directed by 
Commissioner: applications for standard patents);  
    (v) subsection 223 (6) (extensions of time); or  
[33] Regulation 5.2, definition of applicant  
 
     substitute 
 
  applicant  means: 
 IP/N/1/AUS/P/6 
Page 335 
 
 
             (a) in relation to an opp osition under section 101M of the Act — the patentee of 
the innovation patent; and 
              (b) in relation to another opposition — a person who has filed an application or 
request in respect of which another person has filed a notice of opposition. 
 
[34] Regulation 5.3, heading 
 
     substitute 
 
 5.3 Filing of opposition (except under section 101M of the Act) 
 
[35] After regulation 5.3 
 
     insert 
 
 5.3AA Filing of opposition under section 101M of Act 
 
      (1) The Minister or other person w ho intends to oppose an innovation patent under 
section 101M of the Act must file a notice of opposition in the approved form. 
 
      (2) The notice may be filed at any time after the innovation patent is certified. 
       (3) The opponent must file with the notice of opposition a statement that sets out the 
grounds of opposition and the par ticulars relating to each ground. 
 
      (4) Within 7 days of filing the notice and the statement, the opponent must serve a copy 
of the notice and statement on the applicant. 
 
[36] Regulation 5.3A, heading 
 
     substitute 
 
 5.3A Amendment of notice of opposition: correction of error or mistake 
 
[37] After regulation 5.3A 
 
     insert 
 
 5.3B Amendment of notice of opposition: change of opponent 
 
      (1) This regulation applies if a person files a notice of opposition and the right or interest 
on which he or she relied to file the notice is subsequently vested in another person 
(the new opponent ). 
       (2) The new opponent may give to the Commissioner notice, in writing, that the right or 
interest is vested in him or her and request the Commissioner, in writing, to amend the notice of opposition to record his or her name. 
 
      (3) The Commissioner may grant the requ est on the terms (if any) that the Commissioner 
specifies by written notice to the new opponent. 
       (4) The Commissioner must give to th e parties to the opposition the opportunity to make 
representations concerning the proposed amendment. IP/N/1/AUS/P/6 
Page 336  
 
      (5) If the Commissioner allows the amendment:                (a) he or she must give  the applicant a copy of the notice of opposition as 
amended; and 
 
              (b) the opposition is to proceed in the name of the new opponent. 
 
[38] Regulation 5.4 
 
     substitute 
 
 5.4 Filing of statement 
 
  An opponent (except an opponent under section 101M of the Act) must: 
 
             (a) within 3 months of filing the notice of opposition, serve on the applicant a 
copy of a statement that sets out the grounds of opposition, and the particulars relating to each ground; and 
             (b) as soon as practicable after the copy of the statement has been served on the 
applicant, file the statement. 
 
[39] Paragraph 5.5 (1) (a) 
 
     omit 
 
 subregulation 5.4 (1) (“filing of statement”)  
     insert 
 
 paragraph 5.4 (a) 
 
[40] After subregulation 5.5 (3) 
 
     insert 
       (4) Without limiting subregulation (3 ), the Commissioner may dismiss the opposition: 
               (a) for an opposition under section 101M of the Act — if the statement of 
grounds and particulars is not file d with the notice of opposition; or 
               (b) for another opposition — if the statement of grounds and particulars is not 
served within the period prescribed in paragraph 5.4 (a). 
 
[41] Paragraph 5.7 (a) 
 
     omit 
  subregulation 5.4 (1) (“filing of statement”) 
 
     insert 
  paragraph 5.4 (a) IP/N/1/AUS/P/6 
Page 337 
 
 
 
[42] Subregulation 5.8 (1) 
 
     substitute 
       (1) If an opponent intends to rely on evidence in support of the opposition, the opponent 
must: 
   (a) serve on the applicant a copy of any evidence in support of the opposition:  
                          (i) for an opposition under section 101M of the Act — at the same time 
as the opponent serves on the applicant the notice of opposition and the statement of grounds and particulars; or 
                           (ii) for another opposition — within the period mentioned in 
subregulation (1A); and 
               (b) file the evidence in support of the opposition as soon as practicable after the 
copy of the evidence has b een served on the applicant. 
       (1A) For subparagraph (1) (a) (ii), the period is within 3 months from whichever of the 
following occurs last: 
   (a) the day when the opponent served on the applicant:     (i) a copy of the statement referred to in paragraph 5.4 (a); or 
 
                          (ii) if a substitute statement has been served on the applicant under 
regulation 5.7 — a copy of that statement;  
               (b) if the Commissioner has re-examined the complete specification in relation to 
the opposed application under subsection 97 (1) of the Act — the day when 
re-examination is complete d under regulation 9.5;  
               (c) if dismissal of the opposition has been requested under subregulation 5.5 (1) 
— a decision of the Commissioner not to dismiss the opposition;  
 
              (d) if determination of the opposition has been requested under 
subregulation 5.6 (1) — a decision of the Commissioner not to determine the opposition. 
 
[43] Paragraph 5.8 (2) (a) 
 
     omit 
 
 referred to in subregulation 5.4 (2) or paragraph (1) (a) 
 IP/N/1/AUS/P/6 
Page 338  
 
[44] Paragraph 5.8 (3) (a) 
 
     substitute 
 
              (a) serve on the opponent a copy of any evidence in answer to the opposition 
within 3 months from: 
                            (i) for an opposition under section 101M of the Act — the day the notice 
of opposition was served on the applicant; or 
 
                           (ii) fo r another opposition — the end of  the period that applies under 
subparagraph (1) (a) (ii); and 
 
[45] Paragraphs 5.9 (1) (a), (b) and (c) 
 
     omit 
 
 subregulation 5.4 (1)  
     insert 
  
 regulation 5.4  
[46] Paragraph 5.10 (1) (b) 
 
     substitute 
 
              (b) determine that a period prescribed in this Chapter (except in regulation 5.3 or 
5.3AA, paragraph 5.4 (a) or subparagraph 5.8 (1) (a) (i)) is to be extended by 
such further period as the Commissioner reasonably allows. 
 [47] Subregulation 5.10 (2) 
 
     substitute 
 
      (2) The Commissioner may extend the time within which the party may take a step 
prescribed in this Chapter (not being a st ep that is taken under regulation 5.3 or 
5.3AA, paragraph 5.4 (a) or subparagraph 5.8 (1) (a) (i)): 
   (a) on the application of a party in the approved form; and    (b) on such reasonable terms (if any) as the Commissioner specifies; and 
 
  (c) after the party has served the application on the other party.  
[48] Subregulation 5.11 (3) 
 
     substitute 
 
      (3) In subregulation (2), document  does not include a document filed under 
regulation 5.3AA, 5.4 or 5.8, or further evidence referred to in subregulation 5.10 (4). 
 IP/N/1/AUS/P/6 
Page 339 
 
 
[49] Regulations 5.12, 5.13 and 5.14 
 
     substitute 
  5.12 Hearing of opposition 
 
      (1) This regulation applies if the releva nt periods prescribed in re gulation 5.8 have ended, 
unless: 
   (a) the opposition has been dismissed or determined; or 
 
  (b) the notice has been withdrawn.        (2) The Commissioner must, if he or she receives a request by a party to hold a hearing:  
  (a) give a notice of a hearing into the opposition; and 
   (b) hold the hearing.        (3) The Commissioner may, on his or her own motion:  
  (a) give a notice of a hearing into the opposition; and 
   (b) hold the hearing.  
 5.13 Representations to Commissioner 
 
  A representation mentioned in any of th e following provisions may be made to the 
Commissioner in writing or by any other means approved by the Commissioner: 
   (a) subregulation 5.3A (3);  
  (b) subregulation 5.3B (4); 
   (c) subregulation 5.9 (3);    (d) subparagraph 5.10 (5) (c) (i); 
 
  (e) paragraph 5.11 (2) (c).  
5.14 Commissioner not required to hold hearing 
 
  If the Commissioner believes, on reasonabl e grounds, that no party wishes to be heard 
in a matter arising under regulation 5.12 or  5.13, the Commissioner is not required to 
hold a hearing. 
 
[50] Regulation 6.3 
 
     substitute 
 
 6.3 Date of patent 
 
      (1) For paragraph 65 (b) of the Act, the da te of a patent is as set out in this regulation. 
 IP/N/1/AUS/P/6 
Page 340  
 
      (2) For a patent granted under subsection 33 (1 ) or (2) of the Act, the date of the patent is 
the date that would have been the date of the patent if the patent had been granted on 
the application for a standard patent th e grant of which was opposed under section 59 
of the Act. 
 
      (3) For a patent granted under subsection 33 (3 ) or (4) of the Act, the date of the patent is 
the date of the innovation patent that was opposed under section 101M of the Act. 
       (4) For a patent granted under subsection 34 (2) of the Act, the date of the patent is the 
date of the patent referred to in subsection 34 (1) of the Act. 
 
      (5) For a patent granted under section 35 of the Act, the date of the patent is the date of 
the revoked patent. 
       (6) For a patent granted as a result of a declaration under section 36 of the Act, the date 
of the patent is: 
               (a) if the declaration is made in respect of a complete application — the date that 
would have been the date of the patent if the patent had been granted on that 
application; or 
 
              (b) if the declaration is ma de in respect of a provisional application — the earlier 
of: 
                            (i) the date 12 months from the date of filing of the provisional 
specification in respect of that application; and 
 
                          (ii) the da te of filing of the complete application referred to in 
subsection 36 (4) of the Act. 
       (7) For a patent granted on a divisiona l application made under subsection 79B (1) of the 
Act, the date of the patent is: 
 
             (a) if the date of the patent was recorded in the Register 
before 1 January 2000 — the date recorded in the Register; or 
              (b) if the Commissioner determin ed a date of the patent and told the applicant in 
writing before 1 January 2000 — the date  determined by the Commissioner; 
or 
  (c) in any other case — the earliest of:                             (i) the date of the patent of the first-men tioned application referred to in 
subsection 79B (1) of the Act; and 
 
                          (ii) the date that would be the date of the patent if a patent had been 
granted on that first-mentioned application; and 
                           (iii) if that first-mentioned application was itself a divisional application 
or was amended to be a divisional application before filing the later 
application — the date that would be the date of the patent if a patent 
had been granted on the divisional application. 
 IP/N/1/AUS/P/6 
Page 341 
 
 
      (8) For an innovation patent gr anted on a divisional application made under 
subsection 79C (1) of the Act, the date of th e patent is the date of the first patent 
mentioned in subsection 79C (1). 
       (9) If, under section 223 of the Act, the Commissioner has extended the time for making, 
under section 38 of the Act, a complete application associated with a provisional 
application, the date of the patent is th e date 12 months from the date of making the 
first provisional application with which the complete application is associated. 
       (10) If, under section 223 of the Act, the Commissioner has extended the time for making, 
under section 94 of the Act, a Convention application in relation to a basic 
application, the date of the patent is th e date 12 months from the date of making the 
first basic application to which the Convention application relates. 
 
[51] Regulations 6.5 and 6.6 
 
     omit 
 
[52] Subregulation 6.11 (3) 
 
     omit 
 
 beginning on  
     insert 
  from 
 
[53] After Chapter 6 
 
     insert 
 
     Chapter 6A Divisional applications  
 6A.1 Divisional applications: standard patents 
 
  For section 79B of the Act, a divisional application must be made: 
 
  (a) under section 29 of the Act; and                (b) before the date of the grant of a patent on the first-mentioned application in 
section 79B of the Act. 
 
6A.2 Divisional applications: innovation patents 
 
      (1) For section 79C of the Act, a divisional application must be made under section 29 of 
the Act. 
 
      (2) For subsection 79C (2) of the Act, the prescribed period is 1 month from the date on 
which the certification of the first pate nt mentioned in subsection 79C (1) is 
advertised. 
 IP/N/1/AUS/P/6 
Page 342  
 
[54] Subregulation 7.1 (1) 
 
     substitute 
 
      (1) For paragraph 81 (1) (c) of the Act, an application for a further patent must be made 
under section 29 of the Act. 
 
[55] Paragraph 8.1 (3) (b) 
 
     substitute 
 
  (b) subregulation 3.1 (1) and regulation 3.2A;  
[56] Subregulation 8.2 (4) 
 
     substitute 
 
      (4) The Commissioner must not, in rela tion to a PCT application that is treated as an 
application under the Act for a standard pa tent, give a direction under section 44 of 
the Act, unless the applicant has complied with the requirements of subsection 89 (3) of the Act. 
 
[57] Subregulation 8.3 (2) 
 
     substitute 
       (2) Section 141: 
   omit the section, substitute: 
 
  ‘141  Withdrawal of applications 
               (1) Subject to subsection (3 ), a patent application may be withdrawn at any time 
except during a period prescribed for the purposes of this section. 
               (2) A patent application is to be treated as having been withdrawn if, and only if, 
the applicant lodges a written notice of withdrawal signed by the applicant. 
 
              (3) A PCT application is to  be treated as having been withdrawn if Article 11 (3) 
of the PCT ceases to have effect in Australia in relation to the application under Article 24 (1) (i) of the PCT.’. 
 
[58] Subregulation 8.6 (2) 
 
     substitute 
 
      (2) For subsection 95 (3) of the Act, a copy of the specification relating to the basic 
application that is certified by the official chief or head of the Patent Office of the 
Convention country in which the basic a pplication is made must be filed: 
               (a) for a standard patent — within the period from the day on which the 
application is made to immediately before acceptance; or 
 IP/N/1/AUS/P/6 
Page 343 
 
 
              (b) for an innovation patent — within the period from the day on which the 
application is made to immediately before the Commissioner decides to certify the patent. 
 
[59] Subregulation 9.1 (1) 
 
     omit 
 
 subregulation 5.4 (1) (“filing of statement”)       insert 
 
 regulation 5.4  
[60] Subregulations 9.2 (1) and (2) 
 
     substitute 
 
      (1) For subsections 97 (2) and 101G (1) of the Act, a request for re-examination of a 
complete specification must be in the approved form. 
 
      (2) A request must identify the doc uments on which an assertion is based that the 
invention, so far as claimed in any claim and when compared with the prior art base 
as it existed before the priority date of that claim, is not novel, and: 
   (a) for a standard patent — does not involve an inventive step; or 
 
  (b) for an innovation patent — does not involve an innovative step.        (2A) A request must state the rele vance of each of the documents mentioned in 
subregulation (2). 
 [61] Subregulation 9.2 (4)       substitute 
 
      (4) If the request does not comply with subregulations (2), (2A) and (3), the 
Commissioner must not re-examine the complete specification. 
 
[62] Subregulation 9.2 (5) 
 
     omit 
  section 98 of the Act (“report on re-examination”). 
 
     insert 
 
 section 98 or subsection 101G (2) of the Act. 
 IP/N/1/AUS/P/6 
Page 344  
 
[63] Subregulation 9.2 (7) 
 
     omit 
 
 subsection 97 (2) of the Act 
 
     insert 
 
 subsection 97 (2) or 101G (1) of the Act  [64] Subregulation 9.3 (1) 
 
     omit 
 
 section 98 of the Act (“report on re-examination”) 
 
     insert    section 98 or subsection 101G (2) of the Act   
[65] Subregulation 9.4 (1) 
 
     substitute 
 
      (1) For subsection 99 (1) or 101H (1) of the Act, the prescribed period is the period of 2 
months from the day when the Commissioner reports under section 98 or 
subsection 101G (2) of the Act. 
 
[66] Subregulation 9.4 (2) 
 
     after 
  subsection 99 (1) 
 
     insert 
 
 or subsection 101H (1) 
 
[67] Regulation 9.5 
 
     omit 
 
 or (2) 
 IP/N/1/AUS/P/6 
Page 345 
 
 
[68] After Chapter 9 
 
     insert 
 
 Chapter 9A Examination of innovation patents 
 
 9A.1 Request for examination 
 
      (1) A request for examination of a comp lete specification relating to an innovation patent 
must be in the approved form. 
 
      (2) If the Commissioner decides, under paragraph 101A (a) of the Act, to examine a 
complete specification, the Commissioner must tell the patentee about the decision. 
       (3) If a request is made under paragraph 101A (b) of the Act by a person other than the 
patentee, the Commissioner must tell the patentee about the request. 
       (4) A request for examination of a complete specification can be withdrawn only:    (a) by the person who made the request; and  
  (b) before examination of the complete specification has begun; and 
               (c) if the Commissioner is satisfied, on reasonable grounds, that the request was 
made in error. 
 
      (5) If examination of a complete specification has begun, no further requests for 
examination of the specification can be made. 
 
 9A.2 Examination of complete specification 
 
  For section 101B of the Act, the Commissioner may examine a complete 
specification relating to an innovation patent  only if the patent has been granted. 
 
9A.3 Conduct of examination 
 
      (1) If the Commissioner believes, on reaso nable grounds, that there are lawful grounds 
for revocation of the innovation patent, th e Commissioner must state the grounds for 
revocation in reporting on an examination. 
       (2) The patentee may contest a ground fo r revocation in writing or ask for leave to amend 
the complete specification in accordance with Chapter 10. 
 
      (3) If the patentee asks for leave to amend a complete specification in response to, or in 
anticipation of, a report under section 101B  of the Act, the Commissioner must 
examine the specification and report as if each proposed amendment had been made. 
       (4) If the patentee contests a ground for revocation, the Commissioner must examine the 
specification and take note of the matters raised by the applicant. 
       (5) If the request for examination was made by a person other than the patentee, the 
Commissioner must send a copy of the report to the person who requested the examination. 
 IP/N/1/AUS/P/6 
Page 346  
 
9A.4 Period for examination 
 
  For paragraph 101C (b) of the Act, the ex amination of a complete specification for an 
innovation patent must be completed before  the end of whichever of the following 
periods ends latest: 
 
              (a) the period of 6 months  from the date on which the first report is issued under 
section 101B of the Act; 
   (b) the period mentioned in paragraph 13.4 (1) (d); 
              (c) if an appeal has been ma de to a prescribed court in  relation to the patent — 
the period of 3 months from the date  on which the appeal is withdrawn, 
finally dealt with or determined, or such longer period as the court allows; 
               (d) if the Commissioner requests a document under paragraph 1.6 (1B) (b) — the 
period of 5 months from the date  on which the request is made. 
 
9A.5 Validity of innovation patent 
 
  For the purposes of examination, if a no tice has been filed under subsection 28 (1) of 
the Act, the Commissioner must consider a ma tter stated in the notice that addresses a 
claim that an invention does not comply with paragraph 18 (1A) (b) of the Act. 
 
[69] Subregulations 10.1 (1A) and (2) 
      substitute 
 
      (1A) If an applicant proposes to amend a patent request, complete specification or other 
filed document for a reason mentioned in subr egulation (1B), the applicant is taken to 
have complied with subregulation (1) if a written statement of the proposed amendments is filed. 
 
      (1B) For subregulation (1A), the reasons are: 
                (a) to remove a lawf ul ground of objection or revocation raised in an 
examination report; or 
 
               (b) for an application for a standard patent — in antic ipation of examination of 
the patent request and complete specification; or 
                (c) for an innovation pate nt — in anticipation of examination of the complete 
specification. 
 
      (2) If: 
               (a) a proposed amendment is  to be made by means of substituting a document or 
part of a document; or 
 
              (b) the Commissioner requires the applicant or patentee to make a proposed 
amendment by that means; 
   the applicant or patentee must file:  IP/N/1/AUS/P/6 
Page 347 
 
 
              (c) 2 copies of each document or part that is to be substituted for a document or 
part; and 
               (d) on 1 of the copies, an indication, in a manner approved by the Commissioner, 
of the nature and location of the proposed amendment. 
 
[70] Paragraph 10.2 (1) (b) 
 
     omit 
  section 102 of the Act (“what amendments are not allowable?”) 
 
     insert 
 
 section 102 or 103 of the Act 
 
[71] Subregulations 10.2 (6) and (7) 
 
     substitute        (6) Subregulation (6A) applies if: 
 
  (a) either:                             (i) the grant of a standard patent is opposed under section 59 of the Act; 
or 
 
   (ii) an innovation patent is opp osed under section 101M of the Act; and 
               (b) the applicant or patent ee has requested leave to amend the patent request or 
complete specification concerned. 
 
    (6A) The Commissioner must: 
               (a) give a copy of the request for leave to amend and the statement of proposed 
amendments to the opponent as soon as practicable after the request for leave to amend has been filed; and 
 
  (b) invite the opponent to co mment on the request and statement. 
       (7) The opponent may file comments within 21 days, or any longer period (up to 2 
months) allowed by the Commissioner, after being given the copy of the request for leave to amend and the statement under paragraph (6A) (a). 
 
[72] Paragraph 10.3 (3) (a) 
 
     omit 
  section 49 (“acceptance of patent request: sta ndard patent”) or 50 (“consideration and 
acceptance of patent requ est: petty patent”)  
 IP/N/1/AUS/P/6 
Page 348  
 
     insert 
 
 section 49 or 52  
[73]  Subparagraphs 10.3 (3) (b) (i) and (ii) 
 
     omit each mention of 
 
 a petty       insert 
 
 an innovation  
[74] After subregulation 10.3 (4) 
 
     insert 
 
      (5) Subregulation (6) applies if a requ est for leave to amend the patent request for a 
standard patent is filed within 3 weeks befo re the date on which a notice is due to be 
published in the Official Journal under section 54 of the Act in respect of the 
specification, and the amendment would: 
               (a) convert the patent appli cation from an application for a standard patent to an 
application for an innovation patent; or 
 
              (b) change the priority date of the application to a date that is later than the 
priority date that is currently recorded for the application.  
       (6) The proposed amendment is not allowable until after the date on which the notice is 
published. 
 
      (7) A proposed amendment of a comp lete specification for an application for an 
innovation patent, other than an amendment proposed in response to a direction under regulation 3.2B, is not allowable until after the patent has been granted. 
       (8) A proposed amendment of a complete specification for an innovation patent is not 
allowable if the amendment would result in the specification claiming: 
   (a) a thing mentioned in subsection 18 (2) of the Act; or                (b) a thing mentioned in subsection 18 (3) of the Act (other than a thing 
mentioned in subsection 18 (4) of the Act). 
 
      (9) A proposed amendment of a patent re quest is not allowable after the patent has been 
granted. 
 
[75] Subregulation 10.5 (1) 
 
     substitute 
 
      (1) The Commissioner must grant l eave to amend a patent request, complete 
specification or other filed document: 
 IP/N/1/AUS/P/6 
Page 349 
 
 
              (a) if the report on the pr oposed amendments under subre gulation 10.2 (1) is not 
an adverse report; and 
               (b) in the case of amendments that are proposed in anticipation of, or in response 
to, a report relating to an examinati on under section 45 or 48 of the Act and 
that do not relate to matters mentioned in paragraph 6 (c) of the Act — if the 
Commissioner believes on reasonable grounds that the proposed amendments would remove all lawful grounds of objection to the patent request and 
complete specification; and 
 
              (c) in the case of amendments that are proposed in anticipation of, or in response 
to, a report relating to an examination under section 101B of the Act — if the Commissioner believes on reasonable grounds that the proposed amendments would remove all lawful grounds for revocation of the innovation patent. 
 [76] Paragraph 10.5 (2) (a) 
 
     substitute 
 
              (a) the patent request and complete specification to which the leave to amend 
relates have been accepted under section 49 of the Act, or a decision to 
certify has been made under section 101E of the Act; and 
 
[77] Paragraph 10.5 (4) (a) 
 
     omit 
 
 (“grant of standard patent”) or 62 (“ grant and publication of petty patent”) 
 
[78] Regulation 10.8 
 
     substitute 
 
 10.8 Prescribed decisions: appeal to Federal Court 
 
  For subsection 104 (7) of the Act, a prescr ibed decision is a decision to grant leave to 
amend a patent request or complete specif ication to which paragraph 10.5 (1) (b) or 
(c) applies. 
 
[79] Regulation 10.9 
 
     omit 
 
[80] Regulation 10.13 
 
     omit 
 
[81] After subparagraph 12.1 (2) (a) (iv) 
 
     insert 
 
   (v) for an innovation patent — the date that the patent was certified; and  [82] Regulation 12.2, heading IP/N/1/AUS/P/6 
Page 350  
 
 
     substitute 
 
12.2 Prescribed period: revocation of patent 
 
[83] Subregulation 12.2 (1) 
 
     substitute 
 
      (1) For subsection 134 (1) of the Act, th e prescribed period is 2 years from the date of the 
grant of the first compulsory licence in respect of a patent. 
 
[84] Subregulation 12.4 (1) 
 
     substitute 
 
      (1) An applicant to a prescribed court for an order to revoke a patent under 
subsection 138 (1) of the Act must incl ude, in the pleading or another document 
disputing the validity of the patent: 
             (a) particulars of the grounds on which the applicant relies; and 
 
  (b) for an innovation patent — the da te on which the patent was certified. 
 
[85] After regulation 13.1 
 
     insert 
 
 13.1A Period in which standard patent applications may not be withdrawn 
 
      (1) For subsection 141 (1) of the Act,  the prescribed period for a standard patent is: 
 
              (a) 3 weeks before the da te on which a notice is due to be published in the 
Official Journal  under section 54 of the Act in respect of the specification; or 
               (b) 3 weeks before the date on which a notice of acceptance is due to be 
published in the Official Journal  under paragraph 49 (5) (b) of the Act. 
 
      (2) Subregulation (1) does not apply if an order made under subsection 152 (3) or 173 (1) 
of the Act is in force. 
 
[86] Paragraph 13.3 (1A) (b) 
 
     substitute 
 
              (b) the continuation fee incl udes the additional fee stated in column 3 of item 7 
of Part 2 of Schedule 7; and 
 
  (c) the additional fee is payable from the first day of the 6 month period. 
 IP/N/1/AUS/P/6 
Page 351 
 
 
[87] Subregulation 13.3 (2) 
 
     substitute 
 
      (2) In the case of an application to whic h section 33, 34, 35, 36 or 79B of the Act applies, 
a continuation fee that is payable before 12 months after the date of filing of the 
application is taken to have been paid. 
 
[88] Subregulation 13.4 (1) 
 
     omit each mention of 
 
 commencing on  
     insert 
 
 from  
[89] Subregulation 13.4 (2) 
      omit 
 
 the longer or longest period so worked out. 
 
     insert 
  whichever period ends latest. 
 
[90] Regulation 13.6, heading 
 
     substitute 
 
13.6 Time for payment of renewal fee for patent 
 
[91] Subregulation 13.6 (1) 
 
     substitute 
 
 (1) For paragraphs 143 (a) and 143A (d) of the Act:                (a) a renewal fee for a patent  is payable for a relevant anniversary at the last 
moment of the anniversary; and 
 
             (b) the period in which the renewal fee must be paid is the period ending at the 
last moment of the anniversary. 
 
[92] Paragraph 13.6 (2) (b) 
 
     substitute 
 
              (b) the renewal fee includ es the additional fee mentioned in subregulation (2A); 
and 
 
  (c) the additional fee is payable from the first day of the 6 month period. IP/N/1/AUS/P/6 
Page 352  
 
 
[93] After subregulation 13.6 (2) 
 
     insert 
       (2A) For paragraph (2) (b), the additional fee is: 
                (a) for a standard patent — the fee stated in column 3 of item 7 of Part 2 of 
Schedule 7; and 
 
               (b) for an innovation patent — the fee stated in column 3 of item 7A of Part 2 of 
Schedule 7. 
 
[94] Subregulation 13.6 (5) 
 
     after 
 
 section 143  
     insert 
  or 143A 
 
[95] Subregulation 13.6 (6) 
 
     substitute 
 
      (6) In this regulation, relevant anniversary , for a patent, means an anniversary of the 
date of the patent that is mentioned: 
   (a) for a standard patent — in column 2 of item 7 of Part 2 of Schedule 7; or 
 
  (b) for an innovation patent — in column 2 of item 7A of Part 2 of Schedule 7. 
 
  N o t e    For the date of a patent, see sectio n 65 of the Act and regulation 6.3. 
 
[96] Regulation 15.1 
 
     substitute 
 
15.1 Time for restoration of application for patent 
 
  A request under subsection 150 (1) of the Ac t must be filed within 3 months after the 
revocation, under section 149 of the Act, of a direction in respect of the application to 
which the request relates. 
 [97] Subregulation 15.2 (1) 
 
     substitute 
 
      (1) For paragraph 151 (4) (c) of the Act, the prescribed period is 3 months from the 
revocation of a direction under section 149 of the Act. IP/N/1/AUS/P/6 
Page 353 
 
 
[98] Regulation 15.3 
 
     substitute 
 
15.3 Prescribed period: order relating to standard patent 
 
  For subsection 153 (3) of the Act, the prescribed period is 1 month from the 
revocation of the order under subsection 1 52 (3) of the Act that relates to the 
application.  
 [99] Regulation 17.1 
 
     substitute 
 
 17.1 Application for declaration: exploitation of innovation patent 
 
  An application under subsection 169 (1) of the Act for a declaration that an 
innovation patent has been exploited by th e Crown under section 163 of the Act must 
include the date on which the i nnovation patent was certified. 
 
 17.1A Prescribed period: order relating to standard patent 
 
  For subsection 174 (2) of the Act, th e prescribed period is 1 month from the 
revocation of an order under subsection 1 73 (1) of the Act that relates to the 
application. 
 [100] Subregulation 19.1 (1) 
 
     omit 
 
 For the purposes of section 187 of the Act (“re gistration of particulars of patents etc.”), 
      insert 
 
 For subsections 187 (1) and (2) of the Act,  
[101] Paragraph 19.1 (1) (d) 
 
     omit 
 
 standard  
[102] Subregulations 22.2 (2) and (3) 
 
     substitute 
 
      (2) The fees are payable as follows:  
              (a) the fee for filing an a pplication, request or other document is payable when 
the application, request or other document is filed; 
   (b) the fee for appearing at a hearing is  payable immediately before the hearing; 
 IP/N/1/AUS/P/6 
Page 354  
 
              (c) the fee for making a repr esentation mentioned in item 11 of Part 2 is payable 
when the representation is made. 
       (3) If an item specifies the person by whom  a fee is payable, the fee is payable by that 
person. 
 
      (4) For paragraph 89 (3) (b) of the Act:    (a) if a PCT application is to be treat ed as an application for a standard patent: 
 
                           (i) the fees specified in item 3 of Part 2 of Schedule 7 are payable in 
respect of the application for a standard patent; and 
                            (ii) if the PCT application was filed in the Patent Office as a receiving 
office for the purposes of the PCT — the fees specified in item 1 of 
Part 3, and items 1 to 4 of Part 4, of Schedule 7 are payable in respect 
of the PCT application; and 
               (b) the fees specified in item 3 of Part 2 of Schedule 7 are not payable in respect 
of a PCT application. 
 [103] Regulation 22.2A 
 
     substitute 
 
22.2A Failure to pay: patent attorneys fees 
 
  The Designated Manager or the Board must  not process an application mentioned in 
Part 1 of Schedule 7 if the fee payable for the application has not been paid. 
 
 22.2B Failure to pay: filing fees for patent requests 
 
      (1) This regulation applies if:                (a) a fee mentioned in item 1, 2 or 3 of Part 2 of Schedul e 7 is not paid when it is 
payable; and 
 
              (b) within 1 month after the fee is payable, the Commissioner invites the person 
by whom the fee is payable to pay the fee within 2 months after the date of the invitation; and 
   (c) the fee is not paid within the 2 month period. 
 
      (2) The application lapses, or the pa tent ceases, at the end of the 2 month period. 
 
22.2C Failure to pay: certain other filing fees etc 
       (1) This regulation applies if: 
               (a) a fee mentioned in item 4,  paragraph (a) of item 4B, item 5, 6, 8, 9, 10, 11, 
paragraph (a) or (c) of item 15, item 16, 17, 19, 27, 29, 30 or 32 of Part 2 of 
Schedule 7 is not paid when it is payable; and 
 IP/N/1/AUS/P/6 
Page 355 
 
 
              (b) within 1 month after the fee is payable, the Commissioner invites the person 
by whom the fee is payable to pay the fee within 1 month after the date of the invitation; and 
   (c) the fee is not paid within the 1 month period. 
 
      (2) The application, representation, requ est or other relevant doc ument is taken not to 
have been filed or made. 
 
22.2D Failure to pay: fees payable by patentee for requests under s 101A (b) of the Act 
 
      (1) Subregulation (2) applies if:                (a) a fee mentioned in item 4A of Part 2 of Schedule 7 is not paid when it is 
payable; and 
 
              (b) within 1 month after the fee is payable, the Commissioner invites the patentee 
to pay the fee within 1 month after the date of the invitation; and 
   (c) the fee is not paid within the 1 month period. 
 
      (2) The innovation patent ceases at the end of the 1 month period. 
       (3) Subregulation (4) applies if:                (a) a fee mentioned in para graph (b) of item 4B of Part 2 of Schedule 7 (the 
paragraph (b) fee ) is not paid when it is payable; and 
               (b) within 1 month after the fee mentioned in paragraph (a) of that item is paid 
for the request to which the paragr aph (b) fee relates, the Commissioner 
invites the patentee to pay the paragraph (b) fee within 2 months after the date of the invitation; and 
 
  (c) the fee is not paid within the 2 month period.        (4) The innovation patent ceases at the end of the 2 month period.  
22.2E Failure to pay: response fee 
 
      (1) This regulation applies if:                (a) the fee mentioned in ite m 22 of Part 2 of Schedule 7 is not paid when it is 
payable; and 
 
              (b) within 1 month after the fee is payable, the Commissioner invites the person 
by whom the fee is payable to pay the fee within 1 month after the date of the invitation; and 
 
  (c) the fee is not paid within the 1 month period. 
       (2) The application to which the response relates lapses.  
22.2F Consequence if Commissio ner does not invite payment 
 IP/N/1/AUS/P/6 
Page 356  
 
      (1) This regulation applies if:                (a) a fee mentioned in regulation 22.2B, 22.2C, 22.2D or 22.2E is not paid when 
it is payable; and 
 
              (b) the Commissioner does not give the invitation mentioned in the relevant 
regulation within the time allowed.  
       (2) The application, representation, request  or other relevant document is to be treated as 
if the fee had been paid when the app lication, representation, request or other 
document was filed or made. 
       (3) Despite subregulation (2), the fee re mains payable and can be recovered as a debt due 
to the Commonwealth.  
 
22.2G Failure to pay: hearing fees 
 
      (1) Subregulation (2) applies if:               (a) the fee mentioned in paragr aph (b) of item 20 of Part  2 of Schedule 7 is not 
paid when it is payable; and 
 
             (b) within 1 month after the fee is payable, the Commissioner invites the person 
making the request to pay the fee with in 1 month after the date of the 
invitation or before the date of the hearing, whichever is earlier; and 
 
             (c) the fee is not paid within the earlier of the periods mentioned in 
paragraph (b). 
       (2) The request is taken not to have been made.        (3) A hearing cannot be held if the fee me ntioned in paragraph (b) of  item 20 of Part 2 of 
Schedule 7 has not been paid for the hearing. 
       (4) A person cannot appear at a hearing if the fee mentioned in item 21 of Part 2 of 
Schedule 7 has not been paid for the appearance. 
 
22.2H Failure to pay: certain fees for actions by Commissioner 
 
      (1) This regulation applies to a fee mentioned in item 14, paragraph (b) of item 15, 
paragraph (a) of item 20, item 23, 24, 25, 26, 28 or 31 of Part 2 of Schedule 7. 
       (2) The Commissioner must not process a request or application for which such a fee is 
payable if the fee has not been paid. 
       (3) If the fee mentioned in paragraph (b) of item 15 of Part 2 of Schedule 7 is paid for a 
request, the request is taken to have been made on the date on which the fee was paid. 
 
      (4) If: 
   (a) the fee is not paid when it is payable; and                (b) the Commissioner invites the person by whom the fee is payable to pay the 
fee within 1 month after the date of the invitation; and IP/N/1/AUS/P/6 
Page 357 
 
 
   (c) the fee is not paid within the 1 month period;    the request or application is taken not to have been made.  [104] Paragraph 22.5 (a) 
 
     substitute 
 
              (a) must be paid into a Special Account established under section 20 of the 
Financial Management and Accountability Act 1997 ; and 
 
[105] Paragraph 22.5 (b) 
 
     omit 
 
 Fund  
     insert 
 
 Special Account  [106] Subregulation 22.6 (2) 
 
     substitute 
       (2) If acceptance of a patent request and complete specification fo r a standard patent has 
been delayed because of an error or omission on the part of an employee, the period mentioned in subregulation (3) is not, for the purposes of ascertaining the amount of a fee, to be taken into account. 
       (3) For subregulation (2), the period is the period that the Commissioner believes, on 
reasonable grounds, is equal to the period of  delay that resulted from the error or 
omission. 
 
[107] After subregulation 22.8 (2) 
 
     insert  
      (2A) A party to proceedings may request taxation of an amount awarded under 
subregulation (2). 
 
[108] Subregulation 22.8 (3) 
 
     omit 
 
 An amount referred to in subregulation (2)  IP/N/1/AUS/P/6 
Page 358  
 
     insert 
 
 If a request for taxation is made, the amount  
[109] Before regulation 22.9 
 
     insert 
 
22.8A Filing of documents 
   For section 214 of the Act, fax is a prescribed means of filing documents. 
 
[110] Subregulation 22.10 (3) 
 
     omit 
 
 regulation 5.3 (“filing of opposition”)  
     insert 
 
 regulation 5.3 or 5.3AA 
 
[111] After regulation 22.10 
 
     insert 
 
22.10A Address for correspondence 
 
      (1) If provision is made in an approved form to state an address for correspondence, the 
person completing the form may state an address to which all correspondence from 
the Commissioner can be sent. 
 
      (2) A person may file notice of a ch ange of his or her address for correspondence. 
       (3) The address for correspondence need not be in Australia.  
[112] After subregulation 22.11 (1) 
 
     insert 
 
      (1A) Subregulation (1B) applies if:                (a) an application for an extension of time for doing a relevant act is made under 
subsection 223 (2) of the Act; and 
   (b) the relevant act has not been done; and    (c) a notice of opposition to the grant of the application is filed. 
 
      (1B) If the Commissioner grants the a pplication, the Commissioner must extend the time 
to include the period from the day on which th e notice of opposition is filed to the end 
of: 
 IP/N/1/AUS/P/6 
Page 359 
 
 
              (a) if an application is ma de to the Tribunal for a review of a decision of the 
Commissioner — the day when the application is withdrawn or finally dealt with or determined; or 
               (b) in any other case — 21 days after the end of the day on which the 
Commissioner decides the application. 
 
[113] Subregulation 22.11 (3) 
 
     substitute 
 
      (3) For subsection 223 (4) and paragraph 223 (9) (b) of the Act:                (a) the payment of a conti nuation fee or a renewal fee within the 6 month period 
mentioned in subregulation 13.3 (1A) or 13.6 (2) is a prescribed relevant act; 
and 
               (b) the prescribed circumstances  are that the fee is not paid within that 6 month 
period mentioned in subregulation 13.3 (1A) or 13.6 (2). 
       (4) For the definition of relevant act  in subsection 223 (11) of the Act, each of the 
following actions is prescribed: 
               (a) an action or step prescrib ed in Chapter 5, other than an action or step taken 
under regulation 5.3 or 5.3AA, pa ragraph 5.4 (a) or subparagraph 
5.8 (1) (a) (i); 
 
              (b) filing, during the term of a standard patent as required by subsection 71 (2) of 
the Act, an application under subsection 70 (1) of the Act for an extension of the term of the patent. 
 
[114] Subregulation 22.21 (1) 
 
     substitute 
 
      (1) The following provisions of this regulation are prescribed for subsections 41 (4), 
150 (4) and 223 (9) of the Act. 
 
[115] Subregulation 23.4 (2) 
 
     substitute 
 
      (2) If provisions specified in subregulation (1) continue to apply, the following 
provisions do not apply to the opposition referred to in that subregulation: 
   (a) sections 104 and 223 of the Act;    (b) Chapter 5 and regulations 22.21 , 22.22 and 22.23 of these Regulations. 
 IP/N/1/AUS/P/6 
Page 360  
 
[116] After regulation 23.31 
 
     insert 
 
23.32 Transitional: priority date and date of  patent for innovation patent application 
that is a divisional application of a pe tty patent or petty patent application 
 
      (1) For an innovation patent that is a divisional application of a petty patent or a petty 
patent application under section 39 of the old Act: 
 
              (a) the priority date of the innovation patent is the date  that would have been the 
priority date of the application unde r paragraph 3.12 (1) (c) of the old 
Regulations if the innovation patent ap plication had been filed as a divisional 
application under section 39 of the old Act; and 
 
              (b) the date of the innovation pa tent is the date that would have been the date of 
the patent under paragraph 6.3 (1) (f) or  (g) of the old Regulations if the 
innovation patent application had been filed as a divisional application under 
section 39 of the old Act. 
       (2) In this regulation:  
  old Act  means the Patents Act 1990  as in force immediately before the 
commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
  old Regulations  means the Patents Regulations 1991  as in force immediately before 
the commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
23.33 Transitional: examination of innovation patents converted from petty patent 
applications 
 
      (1) This regulation applies if: 
 
  (a) an innovation patent has been granted; and                 (b) the application for th e innovation patent was converted from an application 
for a petty patent; and 
 
              (c) the Commissioner had beg un to consider the petty patent application, or had 
begun to make any investigations in rela tion to the petty patent application, 
under section 50 of the old Act; and 
               (d) the innovation patent is to be examined under Part 1 of Chapter 9A of the 
Act. 
       (2) In examining the innovation patent, the Commissioner is not required to consider the 
results of: 
 
  (a) the consideration of the petty patent application; or 
   (b) any investigations made in rela tion to the petty patent application. 
 IP/N/1/AUS/P/6 
Page 361 
 
 
      (3) In this regulation: 
 
  old Act  means the Patents Act 1990  as in force immediately before the 
commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
23.34 Transitional: certain PCT applications 
 
      (1) This regulation applies to a PCT application that:    (a) is made on or after the commencement day; and 
 
              (b) would, if the old Act a pplied to the application, be  an application to which 
paragraph 88 (2) (a) of the old Act applied. 
       (2) The application is to be treat ed as an application for a standard patent. 
 
      (3) In this regulation: 
 
  commencement day  means the day the Patents Amendment (Innovation Patents) 
Act 2000  commences. 
 
  old Act  means the Patents Act 1990  as in force immediately before the 
commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
23.35 Transitional: payment of fees for petty patents 
       (1) This regulation makes provision in respect of the payment of fees payable for petty 
patents to which the old Act applie s under Part 1 of Schedule 2 to the Patents 
Amendment (Innovation Patents) Act 2000 . 
       (2) Subregulations (3) and (4) apply to  an application for which the fee mentioned in 
item 13 of Part 2 of Schedule 7 to  the old Regulations is payable. 
 
      (3) If:    (a) the fee is not paid when the application is made; and  
              (b) within 1 month after the application is made, the Commissioner invites the 
person by whom the fee is payable to pay the fee within 1 month after the date of the invitation; and 
   (c) the fee is not paid within the 1 month period;  
  the application is taken not to have been made. 
       (4) If the fee is paid, the application is  taken to have been made on the date on which the 
fee was paid. 
 
      (5) Subregulations (6), (7) and (8) a pply to a request for which the fee mentioned in 
paragraph (b) of item 15 of Part 2 of Sche dule 7 to the old Regulations is payable. 
       (6) The Commissioner must not pro cess the request if the fee has not been paid. 
 
      (7) If: IP/N/1/AUS/P/6 
Page 362  
 
   (a) the fee is not paid when the request is made; and                (b) within 1 month after the request is made, the Commissioner invites the 
person by whom the fee is payable to pay the fee within 1 month after the 
date of the invitation; and 
   (c) the fee is not paid within the 1 month period;    the request is taken not to have been made. 
 
      (8) If the fee is paid, the request is ta ken to have been made on the date on which the fee 
was paid. 
       (9) In this regulation:  
  old Act  means the Patents Act 1990  as in force immediately before the 
commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
  old Regulations  means the Patents Regulations 1991  as in force immediately before 
the commencement of the Patents Amendment (Innovation Patents) Act 2000 . 
 
[117] Schedule 3, heading 
 
     substitute 
 
 Schedule 3 Formal requirements for documents to be filed 
  (paragraph 3.2A (1) (c), subparagraph 3. 2B (1) (a) (ii), paragraph 10.2 (1) (a) 
and subregulation 22.16 (2)) 
 
[118] Schedule 3, subclause 5 (2) 
 
     omit 
 
 the sheets of a specification  
     insert 
 
 if a specification is numbered in accordan ce with subclause 6 (2), the sheets of the 
specification 
 
[119] Schedule 3, clause 6 
 
     substitute  6 Numbering of lines or paragraphs 
 
      (1) A specification must be numbere d in accordance with subclause (2) or (3). 
 
      (2) Every fifth line on each sheet of the specification must be numbered: 
   (a) in arabic numerals beginning with ‘1’; and    (b) on the left side of the sheet to the right of the margin. 
 IP/N/1/AUS/P/6 
Page 363 
 
 
      (3) The paragraphs of the specification must be numbered:                (a) sequentially from the first paragraph of the description of the specification; 
and 
 
  (b) in arabic numerals beginning with ‘1’; and 
   (c) on the left side of the sheet to the right of the margin; and    (d) on the first line of each paragraph. 
 
[120] Schedule 3, after clause 12 
 
     insert 
 
13 Electronic documents 
 
  A document that is filed in electronic form must be in the approved form.  
14 Scandalous matter 
   A complete application must not c ontain or consist of scandalous matter. 
 
[121] Schedule 7, Part 1, item 3 
 
     omit 
 
 A report  
     insert 
 
 Applying for a report 
 
[122] Schedule 7, Part 2, item 2 
 
     substitute 
2 On filing a request for an innovation patent accompanied by a complete 
specification: 
  (a) for online filing; or $150
  (b) for filing by another means $180
 
[123] Schedule 7, Part 2, item 4, column 2 
 
     before 
 
 patent request  IP/N/1/AUS/P/6 
Page 364  
 
     insert 
 
 standard  
[124] Schedule 7, Part 2, after item 4 
 
     insert 
4A On filing a request under paragraph 101A (b) of the Act, by the patentee of an 
innovation patent, for examination of the complete specification relating to the 
innovation patent $290
4B On filing a request under paragraph 101A (b) of the Act, by a person other than 
the patentee of the innovation patent, for examination of the complete specification relating to the innovation patent:  
  (a) payable by the person making the request; and $145
  (b) payable by the patentee $145
 
[125] Schedule 7, Part 2, item 6, column 2 
 
     after 
 
 97 (2)  
     insert 
 
 or paragraph 101G (1) (b)  [126] Schedule 7, Part 2, after item 7 
 
     insert 
7A Renewal fee under paragraph 143A (d) of the Act for:  
  (a) the second anniversary  $100 
  (b) the third anniversary $100 
  (c) the fourth anniversary $100 
  (d) the fifth anniversary $165 
  (e) the sixth anniversary $200 
  (f) the seventh anniversary $235 
 plus:  
 if paid within 6 months after the a nniversary in addition to any other fee 
payable in relation to this item — $65 for each month, or part of a month, in the period between the anniversary and 
the day when the fee is paid 
 
[127] Schedule 7, Part 2, item 8, column 2 IP/N/1/AUS/P/6 
Page 365 
 
 
 
     after 
 
 5.3       insert 
 
 or 5.3AA 
 
[128] Schedule 7, Part 2, item 11, column 2 
 
     after 
 
 5.3A       insert  
 or 5.3B 
 
[129] Schedule 7, Part 2, item 13 
 
     omit  
[130] Schedule 7, Part 2, item 15 
 
     substitute 
15 On filing a request for leave to amend:
  
  (a) a complete specification relating to an application for a standard patent 
before a request for examination is filed or after the complete specification is accepted; or $105 
  (b) a patent request for an innovation patent to make it a patent request for a 
standard patent; or $105 
  (c) an innovation patent: 
 (i) after the patent is granted but before a request for examination is 
filed; or 
 (ii) after the patent is certified  $105 
 
[131] Schedule 7, Part 2, item 18 
 
     omit 
 
[132] Schedule 7, Part 2, items 23 and 24, column 2 
 
     omit 
 
 For supply 
 
     insert 
 
 On requesting the supply  
[133] Schedule 7, Part 2, item 28, column 2 IP/N/1/AUS/P/6 
Page 366  
 
   
     omit 
 
 or 48       insert 
 
 , 48 or 101B  
[134] Schedule 7, Part 2, item 29, column 2 
 
     omit 
 
 3.2 (4)       insert 
 
 3.2A (2)  
[135] Schedule 7, Part 2, item 31, column 2 
 
     omit 
 
 For taxing costs  
     insert 
 
 On requesting the taxing of costs  
[136] Schedule 7, Part 2, items 33 and 34 
 
     omit 
 
[137] Further amendments — removal of certain references 
 
Provision omit 
Regulation 1.3, definition of 
acceptance , paragraph (a) (“acceptance of patent request: standard patent”) 
Regulation 1.7 (“certain interna tional applications to be ta ken to have been given an 
international filing date”) 
Subregulation 2.1 (1) (“directions to co-owners”) 
Subregulation 2.2 (2) (“validity not aff ected by certain publication or use”) 
Subregulation 2.3 (1) (“validity not aff ected by certain publication or use”) 
Paragraph 2.3 (1) (a) (“publication or use: prescribed circumstances and periods”) Subregulation 2.4 (1) (“validity: patents of addition”) 
Regulation 2.5 (“notice of matters aff ecting validity of standard patents”) 
Subregulation 3.1 (1) (“application for patent”) IP/N/1/AUS/P/6 
Page 367 
 
 
Provision omit 
Paragraph 3.1 (2) (d) (“deposit requirements”) 
Paragraph 3.1 (2) (e) (“applications by eligible  persons arising out of court proceedings”) 
Regulation 3.7 (“applications by elig ible persons following revocation by 
Commissioner”) 
Regulation 3.7 (“other applica tions by eligible persons”) 
Regulation 3.8 (“application for patent”) 
Paragraph 3.8 (b) (“applications by eligible persons arising out of court proceedings”) 
Paragraph 3.8 (c) (“applications by e ligible persons following revocation by 
Commissioner”) 
Paragraph 3.8 (d) (“other appli cations by eligible persons”) 
Regulation 3.10 (“time for ma king complete application”) 
Subregulation 3.12 (1) (“priority dat es: certain persons and applications”) 
Subregulation 3.12 (1) (“priority dates: certain amended claims”) 
Paragraph 3.12 (2) (a) (“time fo r making complete application”) 
Subregulation 3.12 (2B) (“withdrawn,  abandoned or refused applications”) 
Subregulation 3.12 (4) (“withdrawn, abandoned or refused applications”) 
Regulation 3.14 (“priority date of certain amended claims”) 
Paragraph 3.14 (a) (“modified application of Act”)  
Subregulation 3.15 (1) (“request for examination”) 
Subregulation 3.16 (1) (“request for examination”) 
Subregulation 3.17 (1) (“request for examination”) 
Paragraph 3.18 (3) (a) (“deposit requirements”) 
Paragraph 3.18 (3) (b) (“requests for defermen t of examination or modified examination”) 
Subregulation 3.18 (4) (“notice of matters affecting validity of standard patents”) 
Subregulation 3.19 (2) (“amendments”) 
Subregulation 3.20 (1), 
definition of prescribed 
foreign country  (“prescribed foreign countries: requests for deferment of examination 
and modified examination”) 
Subregulation 3.20 (2) (“request for deferment of examination”) 
Paragraph 3.20 (2) (b) (“time for making complete application”) 
Subregulation 3.20 (3) (“request for modified examination”) 
Regulation 3.21 (“request for deferment of examination”) 
Regulation 3.21 (“request for modified examination”) 
Subparagraph 3.25 (4) (f) (ii) (“compulsory licences”) 
Subparagraph 3.25 (4) (g) (ii) (“expl oitation of inventions by Crown”) IP/N/1/AUS/P/6 
Page 368  
 
Provision omit 
Subregulation 3.26 (1) (“request for Commissioner’s certificate authorising release of sample 
of a micro-organism”) 
Subregulation 3.26 (4) (“deposit requirements”) 
Paragraph 3.26 (5) (a) (“notification that a de posit requirement has ceased to be satisfied”) 
Paragraph 3.26 (5) (b) (“specifications: micro-organisms”) 
Paragraph 3.26 (5) (b) (“prescribed period: de posit requirements taken to be satisfied”) 
Regulation 3.27 (“breach of undertakings gi ven in respect of micro-organisms”) 
Subregulation 3.28 (1) (“breach of undertaki ngs given in respect of micro-organisms”) 
Paragraph 3.28 (2) (d) (“request for Commissioner’s certificate authorising release of sample 
of a micro-organism”) 
Subregulation 3.29 (1) (“deposit requirements”) 
Regulation 3.30 (“specifications: micro-organisms”) 
Paragraph 3.30 (b) (“deposit requirements”) 
Subparagraph 3.30 (c) (i) (“notification that a de posit requirement has ceased to be satisfied”) 
Subregulation 3.31 (1) (“micro-organism s ceasing to be reasonably available”) 
Subregulation 3.31 (1) (“specifications”) 
Regulation 4.1 (“publication of certain information about applicants etc.”) 
Subregulation 4.2 (1) (“notice of publication”) 
Paragraph 4.2 (3) (b) (“priority dates generally”) 
Subregulation 5.3 (1) (“opposition to grant of standard patent”) 
Subregulation 5.3 (1) (“acceptance of patent request: standard patent”) 
Subregulation 5.3 (2) (oppositio n to grant of extension) 
Subregulation 5.3 (2) (acceptance or refusal of application) 
Subregulation 5.3 (3) (“amendments by applicants and patentees”) 
Subregulation 5.3 (3) (“Commissioner to grant leave to amend”) 
Subregulation 5.3 (4) (“what amendments are not allowable?”) 
Subregulation 5.3 (5) (“extensions of time”) 
Subregulation 5.3 (5A) (“correction of Register or patent”) 
Paragraph 5.3 (6) (a) (“protection or  compensation of certain persons”) 
Paragraph 5.5 (1) (b) (“re-examina tion of complete specifications) 
Paragraph 5.5 (1) (b) (“completion of re-examination”) 
Subregulation 5.6 (1) (“re-examina tion of complete specifications”) 
Subregulation 5.6 (1) (“completion of re-examination”) 
Regulation 5.7 (“re-examination of complete specifications”) IP/N/1/AUS/P/6 
Page 369 
 
 
Provision omit 
Paragraph 5.7 (a) (“completion of re-examination”) 
Paragraph 5.9 (1) (a) (“filing of statement”) 
Paragraph 5.9 (2) (c) (“opposition to grant of standard patent”) 
Subregulation 5.10 (3) (“amendments directed  by Commissioner: patent applications”) 
Regulation 6.1 (“grant of standard patent”) 
Subregulation 6.2 (1) (“grant of standard patent”) 
Subregulation 6.2 (1) (“acceptance of patent request: standard patent”) 
Regulation 6.4 (“sealing of duplicate of patent”) 
Regulation 7.2 (“revocation of  patent and grant of patent of addition instead”) 
Subparagraph 8.1 (2) (d) (i) (“modified application of Act”) 
Paragraph 8.1 (3) (a) (“application for patent”) 
Subregulation 8.2 (2) (“modified application of Act”) 
Subregulation 8.3 (3) (“lapsing of applications”) 
Subregulation 8.3 (4) (“extensions of time”) 
Subregulation 8.4 (1) (“notice of publication”) 
Paragraph 8.4 (2) (a) (“prescribed  documents: public inspection”) 
Subregulation 8.5 (2) (“Convention applican ts may make Convention applications”) 
Subregulation 8.6 (1) (“manner of  making Convention application”) 
Regulation 8.7 (“withdrawn, aba ndoned or refused applications”) 
Subregulation 9.1 (1) (“re-examina tion of complete specifications”) 
Subregulation 9.1 (2) (“opposition”) 
Subregulation 9.3 (2) (“opposition”) 
Paragraph 9.4 (2) (a) (“opposition”) Regulation 9.5 (“re-examination of complete specifications”) 
Paragraph 9.5 (a) (“statement by applicant or patentee”) 
Subparagraph 9.5 (a) (i) (“amendments directed  by Commissioner: patent applications”) 
Subparagraph 9.5 (a) (i) (“ report on re-examination”) 
Subregulation 10.1 (1) (“amendmen ts by applicants and patentees”) 
Subregulation 10.2 (1) (“amendmen ts by applicants and patentees”) 
Paragraph 10.2 (1) (a) (“ form of amendments”) 
Paragraph 10.2 (1) (c) (“am endments not allowable”) 
Paragraph 10.2 (8) (a) (“request for Commissioner’s certificate authorising release of sample 
of a micro-organism”) 
Paragraph 10.2 (8) (c) (“deposit requirements”) IP/N/1/AUS/P/6 
Page 370  
 
Provision omit 
Subregulation 10.2 (9) (“notification that a depos it requirement has ceased to be satisfied”) 
Paragraph 10.3 (2) (a) (“deposit requirements”) 
Paragraph 10.3 (4) (a) (“Commissioner to cons ider and deal with requests for leave to 
amend”) 
Paragraph 10.4 (a) (“amen dments not allowable”) 
Paragraph 10.4 (b) (“fo rm of amendments”) 
Regulation 10.10 (“amendments directed by court”) 
Regulation 10.11 (“amendments directed by Commissioner: patents”) 
Regulation 10.12 (“amendments directed by  Commissioner: patent applications”) 
Regulation 10.14 (“persons claiming under assignment or agreement”) 
Subregulation 12.1 (1) (“compulsory licences”) 
Subregulation 12.3 (1) (“revoca tion on surrender of patent”) 
Regulation 13.1 (“withdrawal of applications”) 
Regulation 13.2 (“lapsing of applications”) Subregulation 13.4 (1) (“la psing of applications”) 
Paragraph 13.4 (1) (a) (“request  for modified examination”) 
Paragraph 13.4 (1) (a) (“examination”) 
Paragraph 13.4 (1) (b) (“modified examination”) 
Paragraph 13.4 (1) (c) (“request  for modified examination”) 
Paragraph 13.4 (1) (e) (“disput es between applicants etc.”) 
Subparagraphs 13.4 (1) (f) (i) 
and (g) (i) (“other applications by eligible persons”) 
Regulation 13.5 (“lapsing of applications”) 
Subregulation 15.2 (2) (“application for patent”) 
Subregulation 17.2 (1) (“international applicati ons treated as applications under this Act”) 
Subregulation 17.2 (2) (“application for patent”) 
Paragraph 19.1 (1) (e) (“amendm ents directed by court”) 
Paragraph 19.1 (1) (f) (“Commissioner to be given copies of orders”) 
Paragraph 19.1 (1) (h ) (“re-examination”) 
Paragraph 19.1 (1) (i) (“acquisitions by and assignments to the Crown”) 
Paragraph 19.1 (1) (i) (“the Crown”) 
Subregulation 19.2 (1) (“information obtainable from the Commissioner”) 
Regulation 20.1, definition of 
former attorney  (“discipline”) IP/N/1/AUS/P/6 
Page 371 
 
 
Provision omit 
Regulation 20.1, definition of 
Register of Patent Attorneys  (“registration of patent attorneys”) 
Paragraph 20.4 (d) (“require ments for registration”) 
Subregulation 20.7 (2) (Supplementary Board examination) 
Subparagraph 20.19 (a) (i) ( annual registration fee ) 
Regulation 20.19 (“annual registration fee”) 
Subregulation 20.21 (2) (“complaints”) 
Regulation 20.24 (“decision of Disciplinary Tribunal”) 
Paragraph 20.25 (1) (b) (“decision of Disciplinary Tribunal”) 
Paragraph 20.31 (1) (b) (“disclosure of interest”) 
Paragraph 20.42 (6) (c) (“disclosure of interest”) 
Paragraph 20.43 (3) (b) (“disclosure of interest”) 
Regulation 20.44 (“Disciplinary Tribunal: substantive appointments”) 
Regulation 20.44 (“Disciplinary Tribunal: acting appointments”) Regulation 20.44 (“disclosure of interest”) 
Subregulation 22.2 (1) (“fees”) 
Subregulation 22.3 (1) (“fees”) 
Regulation 22.5 (“fees for international a pplications payable for the benefit of the 
International Bureau”) 
Paragraph 22.5 (a) (“Trust Fund”) Paragraph 22.9 (a) (“death of a pplicant or nominated person”) 
Subregulation 22.11 (1) (“extensions of time”) 
Subregulation 22.16 (5) (“amendments”) 
Subregulation 22.26 (5) (“review of decisions”) 
Paragraphs 23.2 (a) and 
23.3 (1) (a) (“applications under 1952 Act”) 
Subregulation 23.3 (2) (“opposition”) 
Regulation 23.5 (“opposition to grant: practice and procedure”) 
Regulation 23.5 (“certain oppos ition: practice and procedure”) 
Paragraph 23.6 (b) (“opposition to grant: practice and procedure”) 
Paragraph 23.6 (b) (“certain oppos ition: practice and procedure”) 
Regulation 23.7 (“request for Commissioner’s certificate authorising release of sample 
of a micro-organism”) 
Regulation 23.7 (“opposition”) 
Paragraph 23.11 (1) (a) (“infringeme nt by supply of products”) IP/N/1/AUS/P/6 
Page 372  
 
Provision omit 
Subregulation 23.12 (1) (“a pplications under 1952 Act”) 
Subregulation 23.12 (2) (“withdrawn, abandoned or refused applications”) 
Regulation 23.13 (“certificate of validity”) 
Subregulation 23.16 (1) (“examination”) 
Subregulation 23.16 (1) (“modified examination”) 
Regulation 23.17 (“modified application of Act”) 
Paragraph 23.17 (a) (“app lications under 1952 Act”) 
Regulation 23.19 (“examination to be conducted”) 
Subregulation 23.20 (5) (“requirements for registration”) 
Subregulation 23.21 (1) (“establishment of Board”) 
Regulation 23.22 (“Secretary to Board”) 
Regulation 23.23 (“Disciplinary Tribunal: substantive appointments”) 
Subregulation 23.25 (2) (“general fees”) 
Subregulation 23.25 (4) (“prescrib ed period: continuation fees”) 
__________________________________________________________________________________ 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317. 
 
2. Notified in the Commonwealth of Australia Gazette  on 23 May 2001. IP/N/1/AUS/P/6 
Page 373 
 
 
 
 
Patents Amendment Regulations 2001 (No. 2)1 
 
Statutory Rules 2001 No. 1842 
__________________________________________________________________________________ 
 I, WILLIAM PATRICK DEANE, Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council,  make the following Regulations under the Patents Act 
1990. 
 
 Dated 28 June 2001  
 
  
WILLIAM DEANE 
Governor-General 
 
By His Excellency’s Command 
    
WARREN ENTSCH 
Parliamentary Secretary to the Minister for Industry, Science and Resources IP/N/1/AUS/P/6 
Page 374  
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2001 (No. 2) . 
 
2 Commencement 
 
 These Regulations commence on gazettal.  
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
 Schedule 1  Amendments  
  (regulation 3) 
 
[1] Schedule 6, item 1, column 2  
     substitute 
 
 A degree, diploma, advanced diploma or gra duate diploma, under the Australian Qualification 
Framework, that is:  
 
 (a) in a field of technology that contains  potentially patentable subject matter; and 
  (b) awarded by a body, in the Higher Educati on Sector, that is authorised to award a 
degree, diploma, advanced diploma or graduate diploma of that kind. 
 
 Note    The Australian Qualification Framework is a nationally recognised reference which categorises 
qualifications into 12 levels, from institu tions categorised into 3 sectors: schools, vocational and higher education.   
 
 The AQF website is http://www.aqf.edu.au/  
 
[2] Schedule 6, item 2, column 2 
 
     substitute 
 
 An award of an overseas education institution th at is the equivalent of a degree, diploma, 
advanced diploma or graduate diploma mentioned in item 1. 
__________________________________________________________________________________ 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 No. 98. 
 
2. Notified in the Commonwealth of Australia Gazette  on 5 July 2001. IP/N/1/AUS/P/6 
Page 375 
 
 
 
 
Patents Amendment Regulations 2001 (No. 3)1 
 
Statutory Rules 2001 No. 3452 
__________________________________________________________________________________ 
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Patents 
Act 1990. 
 
 Dated 20 December 2001  
 
  
PETER HOLLINGWORTH 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 376  
 
Contents 
 
 1 Name of Regulations   2 Commencement 
 
 3 Amendment of Patents Regulations 1991  
 
Schedule 1 Amendments commencing on gazettal 
 
Schedule 2 Amendments commencing on 1 January 2002  
_______________ 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2001 (No. 3) . 
 
2 Commencement 
 
 These Regulations commence as follows: 
 
 (a) on gazettal — regulations 1 to 3 and Schedule 1;   (b) on 1 January 2002 — Schedule 2.  3 Amendment of Patents Regulations 1991  
 
 Schedules 1 and 2 amend the Patents Regulations 1991 . IP/N/1/AUS/P/6 
Page 377 
 
 
Schedule 1 Amendments commencing on gazettal 
  (regulation 3) 
  
[1] Paragraph 8.4 (2) (a) 
 
     omit 
 
 specified in paragraphs 4.3 (c), (d) and (e);       insert 
 
 mentioned in paragraphs 4.3 (1) (c), (d) and (e); 
 
[2] Paragraph 8.4 (2) (c) 
 
     omit 
 
 referred to in regulation 4.3,  
     insert 
 
 mentioned in subregulation 4.3 (1),  
[3] Subregulation 20.25 (4) 
 
     substitute 
 
 (4) A former attorney, who has been given a notice under subregulation (3), must not 
refuse to comply with a requirement in the notice. 
   Penalty:   5 penalty units. 
 
 (5) However, it is a defence to a prosecution for an offence against subregulation (4) if 
the former attorney has a reasonable excuse. 
 
  N o t e    A defendant bears an evidential burden in relation to the question wh ether he or she has a 
reasonable excuse (see section 13.3 of the Criminal Code ). 
 
[4] Subregulation 20.27 (3) 
 
     substitute 
 
 (3) A person must comply with a direction given to him or her under this regulation. 
 
       Penalty:   5 penalty units.  
[5] Paragraph 20.29 (1) (a) 
 
     omit 
  
 produce any documents  
     insert IP/N/1/AUS/P/6 
Page 378  
 
  produce any documents or articles  
[6] Paragraph 20.29 (1) (b) 
 
     substitute 
 
 (b) summon the attorney to appear before the Tribunal:    (i) to produce any documents or articles mentioned in the summons; and 
 
  (ii) to give evidence to identify the documents or articles.  
[7] Subregulations 20.30 (1) to (3) 
 
     substitute 
 
 (1) A person summoned to appear before the Disciplinary Tribunal must comply with the 
summons by: 
   (a) appearing as required by the summons; and 
 
  (b) producing documents or articles as required by the summons; and    (c) appearing and reporting to the Tribunal from day to day.  
  Penalty:   10 penalty units. 
  (1A) However, it is a defence to a prosecuti on for an offence against subregulation (1) if: 
   (a) the defendant has a reasonable excuse; or  
  (b) in relation to paragraph (1) (c) — the defendant is excused by the Tribunal. 
 
  N o t e    A defendant bears an evidential burden in rela tion to the matters mentioned in subregulation (1A) 
(see section 13.3 of the Criminal Code ). 
 
 (2) A person commits an offence if:  
  (a) the person: 
                            (i) is not a registered patent attorney to whom subregulation (3) applies; 
and 
 
   (ii) appears as a witness before the Disciplinary Tribunal; and  
    (iii) has been paid expenses and allowances; and                 (b) the expenses and a llowances have been determined by the Tribunal in 
accordance with Part 2 of Schedule 8; and 
 
  (c) the person refuses:     (i) to be sworn or make an affirmation; or IP/N/1/AUS/P/6 
Page 379 
 
 
                            (ii) to an swer a question relevant to the evidence that he or she was 
summoned to give. 
   Penalty:   10 penalty units. 
 
 (2A) However, it is a defence to a prosecuti on for an offence against subregulation (2) if 
the person has a reasonable excuse. 
 
  N o t e    A defendant bears an evidential burden in relation to the question wh ether he or she has a 
reasonable excuse (see section 13.3 of the Criminal Code ). 
 
 (2B) Strict liability applies to the physical element of an offence against subregulation (2) 
that is constituted by: 
   (a) the circumstance mentioned in subparagraph (2) (a) (i); and  
  (b) the circumstance mentioned in paragraph (2) (b). 
 
  N o t e    For strict liability , see section 6.1 of the Criminal Code . 
 
 (3) A person commits an offence if the person: 
               (a) is a registered pate nt attorney against whom proceedings have been 
instituted; and 
 
              (b) is summoned to appear at a hearing before the Disciplinary Tribunal in 
respect of those proceedings; and 
   (c) refuses:     (i) to be sworn or to make an affirmation; or 
 
                           (ii) to an swer a question relevant to the evidence that he or she was 
summoned to give. 
   Penalty:   10 penalty units. 
 
 (3A) However, it is a defence to a prosecuti on for an offence against subregulation (3) if 
the person has a reasonable excuse. 
 
  N o t e    A defendant bears an evidential burden in relation to the question wh ether he or she has a 
reasonable excuse (see section 13.3 of the Criminal Code ). 
 
[8] Subregulation 20.30 (4) 
 
     omit 
 
 or fail IP/N/1/AUS/P/6 
Page 380  
 
Schedule 2 Amendments commencing on 1 January 2002 
  (regulation 3) 
  
[1] Subregulation 1.4 (2) 
 
     omit 
 
 1 March 2001       insert 
 
 1 January 2002  
[2] Schedule 2A, Schedule of Fees, item 2 (a), column 2 
 
     omit 
 
 in excess of 6  
     insert 
 
 in excess of 5  
[3] Schedule 7, Part 4, item 2  
 
     substitute 
2 Designation fee for designations made under Rule 4.9 (a) of the PCT in an 
international application: 
 (i) if the application makes 5 or fewer such designations — 140 Swiss francs 
per designation; or 
 (ii) if the application makes 6 or more such designations — 700 Swiss francs 
__________________________________________________________________________________ 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98 and 184. 
 
2. Notified in the Commonwealth of Australia Gazette  on 21 December 2001. IP/N/1/AUS/P/6 
Page 381 
 
 
  
 
Patents Amendment Regulations 2002 (No. 1)1 
 
Statutory Rules 2002 No. 592 
__________________________________________________________________________________ 
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Patents 
Act 1990. 
 
 Dated 27 March 2002  
 
 
 
PETER HOLLINGWORTH 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 382  
 
1 Name of Regulations 
 
 These Regulations are the Patent Amendment Regulations 2002 (No. 1) . 
 
2 Commencement 
 
 These Regulations commence on 1 April 2002.  
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
 
4 Transitional 
 
 (1) The amendment made by item [3] of Schedule 1 applies to information made publicly 
available on or after 1 April 2002. 
  (2) The amendment made by item [19] of Schedule 1 does not apply to an application 
that has lapsed because of paragraph 142 (2) (f) of the Act. 
  (3) The amendment made by item [28] of Schedule 1 applies to an application made on 
or after 1 April 2002. 
 
Schedule 1 Amendments 
  (regulation 3) 
   [1] Subregulation 1.4 (2) 
 
     omit 
 
 1 January 2002       insert 
 
 1 April 2002  
[2] Regulation 2.2, heading 
 
     substitute 
 
 2.2 Publication or use: prescribed circumstances 
 
[3] After subregulation 2.2 (1) 
 
     insert 
 
 (1A) For paragraph 24 (1) (a) of the Act, th e circumstance that there was a publication or 
use of the invention within 12 months before the filing date of the complete 
application, is a prescribed circumstance. 
 IP/N/1/AUS/P/6 
Page 383 
 
 
[4] Subregulation 2.2 (2) 
 
     omit 
 
 For the purposes of paragraph 24 (1) (a) of the Act, the following circumstances are 
prescribed: 
 
     insert 
 
 For paragraph 24 (1) (a) of the Act the fo llowing are also prescribed circumstances: 
 
[5] Regulation 2.3, heading 
 
     substitute 
 
 2.3 Publication or use: prescribed periods 
 
[6] Before subregulation 2.3 (1) 
 
     insert 
  (1A) For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the 
applicant relies on the circumstance in s ubregulation 2.2 (1A), the prescribed period 
is the period of 12 months after the inform ation was first made publicly available. 
 
[7] Subregulation 2.3 (1) 
 
     omit 
 
 For the purposes of subsection 24 (1) of the Ac t, in the case of information of the kind 
referred to in paragraph 24 (1) (a) of  the Act, the prescribed period is: 
      insert 
 
 For information of the kind referred to in pa ragraph 24 (1) (a) of the Act, if the applicant 
relies on a circumstance in subregulation 2.2 (2), the prescribed period is: 
 [8] After subregulation 2.3 (2) 
 
     insert 
 
 (3) Subregulation (4) applies:  
  (a) if an application for a patent is a divisional application: 
                           (i) under section 79B of the Act for an invention disclosed in the 
specification filed with a previous application for a standard patent (the original application ); or 
 
                          (ii) under section 79C of the Act for an invention disclosed in the 
specification filed in respect of an application for an innovation patent (the original application ); and 
 IP/N/1/AUS/P/6 
Page 384  
 
              (b) only to information discl osed in the divisional application that was disclosed 
in the original application. 
  (4) For determining the prescribed period for subsection 24 (1) of the Act, the filing date 
of the divisional application is taken to be the filing date of the original application. 
 
[9] Paragraph 3.2B (1) (d) 
 
     omit 
  6A.1 
 
     insert 
 
 6A.1, 6A.2 
 
[10] Paragraph 3.2B (1) (g) 
 
     omit 
 
 Act. 
 
     insert 
 
 Act;  [11] After paragraph 3.2B (1) (g) 
 
     insert 
 
 (h) if the application is a divisional app lication made under section 79B of the Act in 
relation to an original application that is a PCT application, the complete specification 
for the PCT application must be open to public inspection. 
 
[12] Subregulation 3.2B (2) 
 
     omit 
 
 (e) or (f),  
     insert 
 
 (e), (f) or (h), 
 
[13] After subregulation 3.3 (5) 
 
     insert 
  (6) An abstract is not taken into account in construing the nature of the invention that is 
the subject of the specification to  which the abstract relates. 
  (7) Information in an abstract filed with the complete application may be taken into 
account in determining, for subsection 102 (1) of the Act, whether a matter was in 
substance disclosed in the specification as filed. IP/N/1/AUS/P/6 
Page 385 
 
 
 
[14] Subregulation 3.4 (8) 
 
     omit 
 
[15] Paragraph 3.5A (4) (b) 
 
     substitute 
 
 (b) in any other case — the period ending on the earlier of: 
 
  (i) 2 months after the filing date; and    (ii) the time of acceptance.  [16] After regulation 3.17 
 
     insert 
 
 3.17A Results of documentary searches — standard patent 
       (1) For subsection 45 (3) of the Act, an  applicant informs the Commissioner of the results 
of documentary searches by providing the following: 
               (a) if a patent office has conducted a search and has prepared a report of the 
search — the report; 
 
              (b) if a patent office has conducted a search but has not prepared a report of the 
search — a list of the documents cited by the patent office; 
               (c) if the applicant or a nother party has conducted a search — a list of documents 
that are the result of the search. 
 
      (2) The applicant must inform the Commissioner of the results of any documentary 
searches by the latest of: 
               (a) the time the applicant asks, under section 44 of the Act, for an examination of 
the patent request and specification relating to the application; and 
   (b) 6 months after the search is completed; and    (c) 1 January 2003.  
      (3) In this regulation, the date a search is completed is: 
              (a) for a search conducted by the applicant — the da te when the applicant 
completed the search; or 
 
             (b) for a search conducted by another party — the date when the other party 
informed the applicant or the applicant’ s representative of the results of the 
search. 
 
[17] Subregulation 5.8 (1A) 
 IP/N/1/AUS/P/6 
Page 386  
 
     substitute 
 
      (1A) For subparagraph (1) (a) (ii), the period is within 3 months after the day when the 
opponent served on the applicant a copy of the statement mentioned in paragraph 5.4 (a). 
 
[18] Paragraph 5.10 (2) (c) 
 
     after 
  served 
 
     insert 
 
 a copy of 
 
[19] Subregulation 8.1 (4) 
 
     substitute 
 
      (4) The applicant must meet the require ments of subsection 89 (3) of the Act within the 
period of 31 months after the prio rity date of the application. 
 
[20] Regulation 9.1 
 
     substitute 
 
 9.1 Notice of Commissioner’s decision to re-examine complete specification 
 
  If the Commissioner decides, under subsec tion 97 (1) of the Act, to re-examine a 
complete specification relating to an app lication for a patent, the Commissioner must 
tell: 
 
  (a) the applicant; and    (b) if the application is opposed un der section 59 of the Act — each opponent. 
 [21] After regulation 9A.2 
 
     insert 
 
 9A.2A Results of documentary searches — innovation patent 
       (1) For section 101D of the Act, a pa tentee informs the Commissioner of the results of 
documentary searches by providing the following: 
               (a) if a patent office has conducted a search and has prepared a report of the 
search — the report; 
 
              (b) if a patent office has conducted a search but has not prepared a report of the 
search — a list of the documents cited by the patent office; 
               (c) if the patentee or anot her party has conducted a search — a list of documents 
that are the result of the search. IP/N/1/AUS/P/6 
Page 387 
 
 
       (2) The patentee must inform the Commissioner of the results of any documentary 
searches by the latest of: 
               (a) if the Commissioner decides, under paragraph 101A (a) of the Act, to 
examine the complete specification relating to an innovation patent — 3 
months after the Commissioner tells  the patentee under subregulation 
9A.1 (2); and 
               (b) if the patentee asks, under paragraph 101A (b) of the Act, for an examination 
of the complete specification relating to  an innovation patent — that time; 
and 
               (c) if another person asks for an examination under paragraph 101A (b) of the 
Act — when the patentee pays the fee mentioned in paragraph (b) of item 4B 
of Part 2 of Schedule 7; and 
   (d) 3 months after the search is completed.        (3) In this regulation, the date a search is completed is:  
              (a) for a search conducted by the patentee — the date when the patentee 
completed the search; or 
               (b) for a search conducted by another party — the date when the other party 
informed the patentee or the patentee’s representative of the results of the 
search. 
 
[22] Paragraph 9A.4 (d) 
 
     omit 
  made. 
 
     insert 
 
 made; 
 IP/N/1/AUS/P/6 
Page 388  
 
[23] After paragraph 9A.4 (d) 
 
     insert 
 
 (e) if: 
 
              (i) the Commissioner h as informed the patentee of a notice under subsection 
28 (1) of the Act; or  
              (ii) the patentee has info rmed the Commissioner, under section 101D of the Act, 
of the results of any documentary searches; 
 
  and a ground for revocation is raised based  on information in the notice or the search 
results — the period of 3 months from the date of the report that first mentions the ground for revocation. 
 [24] Subregulation 13.3 (2) 
 
     omit 
 
[25] Paragraph 13.4 (1) (k) 
 
     omit 
 
 request.  
     insert 
 
 request;  
[26] After paragraph 13.4 (1) (k) 
 
     insert 
 
      (l) if:               (i) the Commissioner has informed the applicant of a notice under 
subsection 27 (1) of the Act; or  
 
             (ii) the applicant has info rmed the Commissioner, under subsection 45 (3) of the 
Act, of the results of any documentary searches; 
   and an objection is raised based on info rmation in the notice or the search results — 
the period of 3 months from the date of th e report that first mentions the objection. 
 
[27] Subregulation 13.4 (2) 
 
     omit 
  (k) 
 
     insert 
 
 (l) 
 IP/N/1/AUS/P/6 
Page 389 
 
 
[28] After subregulation 13.6 (3) 
 
     insert 
 
      (4) If an application for an innovation patent is made under section 79B or 79C of the 
Act, a renewal fee that is payable within 1 month after the grant of the patent is taken 
to have been paid. 
 
[29] After regulation 13.6 
 
     insert 
 
 13.7 Prescribed period: ceasing of innovation patents 
 
  For paragraph 143A (c) of the Act, the prescribed period is the period mentioned in 
regulation 9A.4 that applies to the patent. 
 
[30] Subregulation 19.2 (2) 
 
     omit 
  3 
 
     insert 
 
 10 
 
[31] Paragraph 22.2C (1) (a) 
 
     after 
 
 19, 
 
     insert 
 
 19A,  [32] Subregulation 22.11 (1) 
 
     after 
 
 subsection 223 (2)       insert 
 
 or (2A)  IP/N/1/AUS/P/6 
Page 390  
 
[33] After subregulation 22.11 (1B) 
      insert 
 
      (1C) For paragraph 223 (2A) (b) of th e Act the prescribed period is 2 months after the 
circumstance that prevented the person from doing the relevant act within the time 
required ceases to exist. 
       (1D) For subsection 223 (2B) of the Act the prescribed peri od is 12 months after the end of 
the time within which the act is required to be done. 
 
[34] Schedule 2, Patent Cooperation Treaty 
 
     omit 
 
Done at Washington June 19, 1970 
amended on October 2, 1979 and modified on February 3, 1984 
 
     insert 
 
Done at Washington June 19, 1970,  
amended on October 2, 1979 
and modified on February 3, 1984 and on October 3, 2001. 
 
[35] Schedule 2, Article 22 (1) 
 
     omit each mention of  
 
 20 months  
     insert 
  30 months 
 
[36] Schedule 2A, Adoption and amendment dates 
 
     omit 
 
 2000 and on October 3, 2000.  
     insert 
 
 2000, on October 3, 2000 and on October 3, 2001. 
 
[37] Schedule 2A, paragraph 90
bis.1 (a) 
 
     substitute 
  ( a) The applicant may withdraw the internati onal application at any time prior to the 
expiration of 30 months from the priority date. 
 IP/N/1/AUS/P/6 
Page 391 
 
 
[38] Schedule 2A, paragraph 90bis.2 (a) 
 
     substitute 
 
 ( a) The applicant may withdraw the designation of any designated State at any time prior 
to the expiration of 30 months from the prio rity date.  Withdrawal of the designation 
of a State which has been elected sha ll entail withdrawal of the corresponding 
election under Rule 90bis.4. 
 
[39] Schedule 2A, paragraph 90bis.3 (a) 
 
     substitute 
 
 ( a) The applicant may withdraw a priority clai m, made in the international application 
under Article 8 (1), at any time prior to the expiration of 30 months from the priority 
date. 
 
[40] Schedule 7, Part 2, after item 19 
 
     insert 
19A For an application for an extensi on of time under subsection 223 (2A) of the 
Act: 
  (a) on filing $90
 and 
  (b) for each month or part of a month $65
__________________________________________________________________________________  Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387; 1995 Nos. 16, 20, 82  and 427; 1996 No. 271; 1997 Nos. 192 
and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 2000 No. 317; 
2001 Nos. 98, 184 and 345. 
 
2. Notified in the Commonwealth of Australia Gazette  on 28 March 2002. IP/N/1/AUS/P/6 
Page 392  
 
 
 
Patents Amendment Regulations 2002 (No. 2)1 
 
Statutory Rules 2002 No. 1002 
__________________________________________________________________________________ 
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Patents 
Act 1990 . 
  Dated 16 May 2002  
 
  
PETER HOLLINGWORTH 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 393 
 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2002 (No.2).  
 
2 Commencement 
 
 These Regulations commence on gazettal.  
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
 
Schedule 1 Amendments 
  (regulation 3) 
   [1] Subregulation 4.3 (1) 
 
     substitute 
 
      (1) For subsection 55 (1) of the Act, all documents that are:  
              (a) associated with the appli cation, or with any provisi onal application associated 
with the application; and 
           (b) in the possession of the Patent Office;  
  are prescribed, other than: 
               (c) documents that woul d be privileged from production in legal proceedings on 
the ground of legal pr ofessional privilege; and 
               (d) the results of documen tary searches provided under subsection 45 (3) of the 
Act; and 
   (e) the documents mentioned in subregulation (2).  
[2] Subregulation 8.4 (2) 
 
substitute 
 
      (2) For subsection 92 (4) of the Act, all documents that are:                (a) associated with the a pplication, or with any provisional application from 
which the application claims priority  under article 8 of the PCT; and 
   (b) in the possession of the Patent Office;    are prescribed, other than: 
 
              (c) documents that woul d be privileged from production in legal proceedings on 
the ground of legal pr ofessional privilege; and 
               (d) the results of documen tary searches provided under subsection 45 (3) of the 
Act; and IP/N/1/AUS/P/6 
Page 394  
 
   (e) the documents mentioned in subregulation 4.3 (2).  
[3] After subregulation 13.3 (1A) 
 
     insert 
 
      (2) In the case of an application, file d before 1 April 2002, to which section 33, 34, 35, 
36 or 79B of the Act applies, a continuation fee that is pa yable before 12 months after 
the date of filing the applicati on is taken to have been paid. 
__________________________________________________________________________________  Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 No. 59. 
 
2. Notified in the Commonwealth of Australia Gazette  on 23 May 2002. IP/N/1/AUS/P/6 
Page 395 
 
 
 
 
Patents Amendment Regulations 2002 (No. 3)1 
 
Statutory Rules 2002 No. 2632 
__________________________________________________________________________________ 
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Patents 
Act 1990 . 
  Dated 30 October 2002  
 
  
PETER HOLLINGWORTH 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 396  
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2002 (No. 3) . 
 
2 Commencement 
 
 These Regulations commence on gazettal.  
3 Amendment of Patents Regulations 1991 
  Schedule 1 amends the Patents Regulations 1991. 
 
Schedule 1 Amendment 
  (regulation 3) 
   [41] Paragraph 3.17A (2) (c) 
 
     substitute 
 
 (c) 1 June 2003. 
__________________________________________________________________________________ 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100 and 173. 
 
2. Notified in the Commonwealth of Australia Gazette  on 6 November 2002. IP/N/1/AUS/P/6 
Page 397 
 
 
 
 
Patents Amendment Regulations 2002 (No. 4)1 
 
Statutory Rules 2002 No. 3172 
__________________________________________________________________________________ 
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Patents 
Act 1990 . 
  Dated 12 December 2002  
 
  
PETER HOLLINGWORTH 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 398  
 
Contents 
 
 1 Name of Regulations   2 Commencement 
 
 3 Amendment of Patents Regulations 1991  
  4 Transitional  Schedule 1 Amendments commencing on gazettal  Schedule 2 Amendments commencing on 1 January 2003 
 
__________ 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2002 (No. 4) . 
 
2 Commencement 
 
 These Regulations commence as follows:   (a) on gazettal — regulations 1 to 3 and Schedule 1;  
 (b) on 1 January 2003 — regulation 4 and Schedule 2. 
 
3 Amendment of Patents Regulations 1991 
 
 Schedules 1 and 2 amend the Patents Regulations 1991. 
 4 Transitional 
 
     (1) The amendments made by items [1] to [4] and [6] to [15] of Schedule 2 apply in relation to an 
international application if the international f iling date of the application is a date on or 
after 1 January 2003. 
 
     (2) The amendments made by items [5] and [16] of Schedule 2 apply in relation to an 
international  application if the applicable time li mit under Article 22 or 39(1) of the PCT 
expires on or after 1 January 2003.  
 
 Note   international application , international filing date and PCT have the meanings given in the dictionary in 
Schedule 1 to the Act. 
 IP/N/1/AUS/P/6 
Page 399 
 
 
Schedule 1 Amendments commencing on gazettal 
  (regulation 3) 
    
[1] Subregulation 1.4 (1) 
 
     omit 
 
 30 April 1991       insert 
 
 1 October 2002  
[2] Schedule 1A, Adoption and amendment dates, after the table of provisions 
 
     omit 
 
 amended on January 20, 1981  
     insert  
 
 amended on January 20, 19 81 and on October 1, 2002 
 
[3] Schedule 1A, Rule 13.1 
 
     substitute 
 
13.1   Form of Publication  
 Any publication by the International Bureau referre d to in the Treaty or these Regulations shall be 
made on paper or in electronic form. 
 
[4] Schedule 1A, paragraph 13.2 (a) 
 
     substitute 
 (a)   At least once a year, preferably in the fi rst quarter of the year, an up-to-date list of the 
international depositary authorities sh all be published, indicating in respect of each such authority the 
kinds of microorganisms that may be deposited with it and the amount of the fees charged by it.  
[5] Schedule 1A, paragraph 13.2 (b) 
 
     omit everything before subparagraph (i), insert 
 
(b)   Full information on any of the following facts shall be published once, promptly after the occurrence  of the fact: 
 [6] Schedule 2A, Schedule of Fees, item 4 
 
     omit 
 
 filed on paper together with a copy thereof in electronic form. 
 IP/N/1/AUS/P/6 
Page 400  
 
     insert 
 
 filed:   (a)   on paper together with a copy thereof in electronic form; or 
 
 (b)   in electronic form.  
[7] Schedule 4 
 
     after 
 
 Senegal  
     insert 
 
 Seychelles  IP/N/1/AUS/P/6 
Page 401 
 
 
Schedule 2 Amendments commencing on 1 January 2003 
  (regulation 3) 
    
[1] Subregulation 1.4 (2) 
 
     omit 
 
 1 April 2002       insert 
 
 1 January 2003  
[2] Schedule 2A, Adoption and amendment dates, before the table of provisions 
 
     omit 
 
 October 3, 2000 and on October 3, 2001.  
     insert 
 
 October 3, 2000, on October 3, 2001 and on October 1, 2002.  
[3] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 12 Language of the International App lication and Translation for the Purposes of 
International Search 
 
     insert 
 
Rule 12 Language of the International App lication and Translation for the Purposes of 
International Search and International Publication 
 
[4] Schedule 2A, Table of Provisions 
 
     after 
 
 12.3 Translation for the Purposes of International Search  
     insert 
 12.4 Translation for the Purposes of International Publication 
 
[5] Schedule 2A, Table of Provisions 
 
     after 
 
 49.5 Contents of and Physical Requirements for the Translation  IP/N/1/AUS/P/6 
Page 402  
 
     insert 
 
 49.6 Reinstatement of Rights After Failure to  Perform the Acts Referred to in Article 22 
 
[6] Schedule 2A, Rule 12, heading 
 
     substitute 
 
Rule 12 
Language of the International Application and Translation 
 for the Purposes of International Se arch and International Publication 
 
[7] Schedule 2A, paragraph 12.1 (c) 
 
     substitute 
 
 (c)   Notwithstanding paragraph (a), the request  shall be filed in any language of publication 
which the receiving Office accepts for the purposes of this paragraph.  
[8] Schedule 2A, subparagraph 12.2 (b) (i) 
 
     omit  
 
 48.3 (b)  
     insert 
 
 12.4 (a)  
[9] Schedule 2A, paragraph 12.3 (e) 
 
     omit 
 
 basic fee.  
     insert 
  basic fee referred to in item 1 (a) of the Schedule of Fees. 
 
[10] Schedule 2A, after Rule 12.3 
 
     insert 
 12.4   Translation for the Purposes of  International Publication 
  (a)   Where the language in which the interna tional application is file d is not a language of 
publication and no translation is required under Rule 12.3 (a), the applicant shall, within 14 months 
from the priority date, furnish to the receiving Office a translation of the international application into 
any language of publication which the receiving Offi ce accepts for the purposes of this paragraph. 
  (b)   Paragraph (a) shall not apply to the request nor to any sequence listing part of the 
description.  IP/N/1/AUS/P/6 
Page 403 
 
 
 (c)   Where the applicant has not, within the tim e limit referred to in paragraph (a), furnished 
a translation required under that pa ragraph, the receiving Office shall invite the applicant to furnish 
the required translation, and to pay, where a pplicable, the late furnishing fee required under 
paragraph (e), within 16 months from the priority  date.  Any translation received by the receiving 
Office before that Office sends the invitation under th e previous sentence shall be considered to have 
been received before the expiration of the time limit under paragraph (a). 
  (d)   Where the applicant has not, within th e time limit under paragraph (c), furnished the 
required translation and paid any re quired late furnishing fee, the in ternational application shall be 
considered withdrawn and the receiving Office shal l so declare.  Any translation and any payment 
received by the receiving Office before that Office ma kes the declaration under the previous sentence 
and before the expiration of 17 months from the prio rity date shall be considered to have been 
received before the expiration of that time limit.   (e)   The furnishing of a translation after th e expiration of the time limit under paragraph (a) 
may be subjected by the receiving Office to the payment to it, for its own benefit, of a late furnishing 
fee equal to 50% of the basic fee referred to in item 1 (a) of the Schedule of Fees.  
[11] Schedule 2A, paragraph 22.1 (h) 
 
     omit 
 
 12.3,  
     insert 
  12.3 or 12.4, 
 
[12] Schedule 2A, subparagraph 26.3 (b) (ii) 
 
     after 
  12.3 
 
     insert 
 
 or 12.4 
 
[13] Schedule 2A, paragraph 29.1 (a) 
 
     after 
 
 12.3 (d) 
 
     insert 
 
 or 12.4 (d)  [14] Schedule 2A, paragraph 48.3 (a
bis) 
 
     omit 
 
 12.3, 
 IP/N/1/AUS/P/6 
Page 404  
 
     insert 
 
 12.3 or 12.4,  
[15] Schedule 2A, paragraph 48.3 (b) 
 
     omit 
 
[16] Schedule 2A, after Rule 49.5 
 
     insert 
 
49.6   Reinstatement of Rights After Failure to P erform the Acts Referred to in Article 22 
  (a)   Where the effect of the international application provided for in Article 11 (3) has ceased 
because the applicant failed to perform the acts refe rred to in Article 22 within the applicable time 
limit, the designated Office shall, upon request of the a pplicant, subject to paragraphs (b) to (e) of this 
Rule, reinstate the rights of the app licant with respect to that international application if it finds that 
any delay in meeting that time limit was unintentiona l or, at the option of the designated Office, that 
the failure to meet that time limit occurred in sp ite of due care required by the circumstances having 
been taken. 
 
 (b)   The request under paragraph (a) shall be  submitted to the designated Office, and the acts 
referred to in Article 22 shall be performed, within whichever of th e following periods expires first: 
          (i) two months from the date of remova l of the cause of the failure to meet the applicable 
time limit under Article 22; or 
         (ii) 12 months from the date of  the expiration of the applicable time limit under 
Article 22; 
 provided that the applicant may submit the request at any later time if so permitted by the national law 
applicable by the designated Office. 
  (c)   The request under paragraph (a) shall state the reasons for the failure to comply with the 
applicable time limit under Article 22.  
 (d)   The national law applicable by the designated Office may require: 
          (i) that a fee be paid in respect of a request under paragraph (a);           ii) that a declaration or other evidence in support of the reasons referred to in 
paragraph (a) be filed. 
 
 (e)   The designated Office shall not refuse a request under paragraph (a) without giving the 
applicant the opportunity to make observations on th e intended refusal within a time limit which shall 
be reasonable under the circumstances.  
 (f)   If, on October 1, 2002, paragraphs (a) to (e) are not compatible with the national law 
applied by the designated Office, t hose paragraphs shall not apply in respect of that designated Office 
for as long as they continue not to be compatible w ith that law, provided that the said Office informs 
the International Bureau accordingly by January 1, 20 03.  The information received shall be promptly 
published by the International Bureau in the Gazette. 
__________________________________________________________________________________ IP/N/1/AUS/P/6 
Page 405 
 
 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173 and 263. 
 
2. Notified in the Commonwealth of Australia Gazette  on 19 December 2002. IP/N/1/AUS/P/6 
Page 406  
 
 
 
Patents Amendment Regulations 2003 (No. 1)1 
 
Statutory Rules 2003 No. 712 
__________________________________________________________________________________ 
 I, PETER JOHN HOLLINGWORTH, Governor-General of the Commonwealth of Australia, acting 
with the advice of the Federal Executive Counc il, make the following Regulations under the Patents 
Act 1990 . 
  Dated 16 April 2003  
 
  
PETER HOLLINGWORTH 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 407 
 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2003 (No. 1).  
 
2 Commencement 
 
 These Regulations commence on gazettal.  
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
 
Schedule 1 Amendment 
  (regulation 3) 
   [42] Paragraph 3.17A (2) (c) 
 
     substitute 
 
 (c) 1 February 2004. 
_________________________________________________________________________________ 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264,  291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173, 263 and 317. 
 
2. Notified in the Commonwealth of Australia Gazette  on 28 April 2003. IP/N/1/AUS/P/6 
Page 408  
 
 
 
Patents Amendment Regulations 2003 (No. 2)1 
 
Statutory Rules 2003 No. 2132 
__________________________________________________________________________________ 
 I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Patents Act 
1990 . 
  Dated 14 August 2003  
 
  
P. M. JEFFERY 
Governor-General 
 
By His Excellency’s Command 
    
JOE HOCKEY 
Minister for Small Business and Tourism IP/N/1/AUS/P/6 
Page 409 
 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2003 (No.2).  
 
2 Commencement 
 
 These Regulations commence as follows:   (a) on gazettal — regulations 1 to 3, and Schedule 1;  
 (b) on the commencement of Part 1 of Schedule 2 to the Intellectual Property Laws 
Amendment Act 2003  — Schedule 2. 
 
3 Amendment of Patents Regulations 1991  
  Schedule 1 and Schedule 2 amend the Patents Regulations 1991 . 
 
Schedule 1 Amendments commencing on gazettal 
  (regulation 3) 
   
[1] Schedule 3, paragraph 2 (f) 
 
     omit 
 
 subject to subparagraph 3.2 (2) (c) (ii) of these Regulations,  [2] Schedule 3, subclause 5 (1) 
 
     substitute 
 
     (1) The parts of a patent application must be presented in the following order:  
 (a) patent request; 
  (b) description of the invention, other than  any sequence listing part of the description; 
  (c) claim or claims; 
 
 (d) abstract;   (e) drawing or drawings;   (f) sequence listing part of the description, if applicable. 
 IP/N/1/AUS/P/6 
Page 410  
 
Schedule 2 Amendments commencing on the commencement of Part 1 of Schedule 2 to the 
Intellectual Property Laws Amendment Act 2003  
  (regulation 3) 
   
[1] After regulation 1.3 
 
     insert 
 
1.3A Meaning of completed  in relation to a search 
  For these regulations: 
  A search is completed  on the earliest of: 
  (a) the date, if any, specified in the repor t as the date that the report was issued; and 
 
 (b) the date, if any, specified in the report as the date that the search was completed; and 
  (c) the date that the search results were issu ed to the applicant or patentee by the foreign 
patent office. 
 [2] Regulation 3.17A 
 
     substitute 
 
3.17A Results of documentary searches — foreign patent office 
 
     (1) For subsection 45 (3) of the Act, an applicant informs the Commissioner of the results of 
documentary searches by or on behalf of a fore ign patent office, other than the European 
Patent Office or the UK Patent Office, by providing: 
  (a) a list of documents, cited by the foreign patent office; or 
 
 (b) a copy of the search report issued by the foreign patent office.       (2) For paragraph (1) (a), it is not necessary to refer in a list to a docume nt that has been included 
in a list or report in relation to the applicati on, previously provided to the Commissioner for 
the Act or these Regulations. 
      (3) For subsection 45 (3) of the Act,  an applicant informs the Co mmissioner of the results of 
documentary searches by or on behalf of the Europ ean Patent Office or the UK Patent Office:  
  (a) by providing: 
 
  (i) a list of the documents cited by the patent office; and                (ii) for a list provided on or after 26 August 2003 — the symbols used by the 
patent office to indicate the relevance of the documents; or 
 
 (b) by providing a copy of the search report issued by the patent office. 
      (4) The applicant must inform the Commissi oner of the results of a documentary search by the 
latest of: 
 IP/N/1/AUS/P/6 
Page 411 
 
 
 (a) the day 6 months after the search is completed; and   (b) the day 6 months after the applicant ask s for an examination under section 44 of the 
Act; and 
 
 (c) 1 February 2004. 
      (5) However:   (a) if an applicant applies for an extension of time: 
 
  (i) after the day applicable to the applicant under subregulation (4); and               (ii) on or before the day 3 months after the date on which a notice of acceptance 
is published under paragraph 49 (5) (b) of the Act; 
 
  the period within which the applicant must  inform the Commissioner of the results of 
a documentary search is taken to end on the date on which the app lication is filed in 
accordance with subregulation (6); and 
  (b) the applicant may inform the Commissione r of the results of the documentary search 
on that date. 
      (6) An application under subregulation (5) must be filed: 
  (a) in the approved form; and 
 
 (b) with:    (i) the search results; and    (ii) the relevant fee in item 239 in Schedule 7. 
 
     (7) If a single application under subregulati on (5) relates to more than 1 set of search results: 
  (a) the applicant needs to pay only one f ee in respect of all the search results; and 
 
 (b) the fee is calculated by reference to th e search results that require the longest period 
of extension. 
      (8) For subsection 45 (5) of the Act, completed , in relation to a search, has the meaning given by 
regulation 1.3A. 
 3.17B Prescribed documentary searches by or on behalf of a foreign patent office 
 
 For paragraph 45 (3) (a) of the Act, the following documentary searches by or on behalf of a 
foreign patent office are prescribed (so that  information need not be given to the 
Commissioner): 
 
 (a) for any application — a search that produces a nil result;   (b) if the application is a PCT application — a search that results in an International 
Search Report and any additional search  conducted during the international 
preliminary examination; IP/N/1/AUS/P/6 
Page 412  
 
  (c) if the application ( application A ) is an application which the applicant is permitted to 
make under subsection 79B (1) of the Act ( a divisional application ): 
 
(i) a search, the result of which was discl osed under subsection 45 (3) of the Act 
in relation to the first-mentioned application for application A under 
subsection 79B (1) of the Act ( application B ); and 
               (ii) if application B is also a divisional application — a search, the result of 
which was disclosed under subsection 45 (3 ) of the Act in relation to the first-
mentioned application under subsection 79B  (1) of the Act for application B. 
 
 
Note    Under subsection 79B (1) of the Act, if a complete pa tent application for a patent  is made, the applicant may 
make a further complete  application for a pate nt for an invention: 
 
 (a) disclosed in the specification filed in re spect of the first-ment ioned application; and 
  (b) where the first-mentioned application is for a sta ndard patent and at least 3 months have elapsed since 
the publication of a notice of acceptance of the re levant patent request and specification in the Official 
Journal  — falling within the scope of the claims of the accepted specification. 
 
 In paragraph (c), application A is the ‘fu rther complete application’ mentioned in 
subsection 79B (1) of the Act. It is described in paragraph (c) as a ‘divisional application’. 
Application B is the ‘first-mentioned application’  in relation to application A. If results of 
searches have been disclosed in the course of a pplication B, the results do not need to be 
disclosed again in the course of application A. 
 
 However, it is possible under subsection 79B (1 ) of the Act that application B may also be a 
divisional application in relation to another appli cation. In that case, there will also be a first-
mentioned application for application B. If r esults of searches have been disclosed in the 
course of that first-mentioned application, the r esults do not need to be disclosed again in the 
course of application A. 
 
 (d) if the application is an application fo r a patent of addition under Chapter 7 of the 
Act — a search, the result of which was di sclosed under subsection 45 (3) of the Act 
in relation to the application for the main invention; 
 
 (e) a search, other than a search by or on beha lf of the European Patent Office or the UK 
Patent Office, the result of which: 
               (i) has already been given to the Commissioner under subsection 45 (3) of the 
Act in relation to the application; or 
 
              (ii) was contained in the International Search Report; 
  (f) a search, the result of which was not received by the applicant.  IP/N/1/AUS/P/6 
Page 413 
 
 
[3] After regulation 8.1A 
 
     insert 
 
8.1B Amendments to a PCT application under Article 34 
 
 If:   (a) a PCT application has been ame nded under Article 34 of the PCT; and 
 
 (b) the applicant meets the requirements in  subsection 89 (3) of the Act after the 
international preliminary exam ination report is established; 
  the description, drawings and claims containe d in the application are taken to have been 
amended for the purposes of the Act on the da y on which the amendment under Article 34 of 
the PCT was made. 
 
 Note    Subsection 89 (5) of the Act re lates to amendments made under Artic le 34 of the PCT if Australia was 
elected within the period provided for in Article 39 of th e PCT. This regulation applie s to amendments made under 
Article 34 if Australia was elected after the period provided for in Article 39.  
 
[4] Subregulation 9A.2A (1) 
 
     substitute 
 
     (1) For subsection 101D (1) of the Act, a patentee informs the Commissioner of the results of 
documentary searches by or on behalf of a fore ign patent office, other than the European 
Patent Office or the UK Patent Office, by providing: 
  (a) a list of documents, cited by the foreign patent office; or   (b) a copy of the search report issued by the foreign patent office. 
 
     (1A) For paragraph (1) (a), it  is not necessary to refer in a list to  a document that has been included 
in a list or report in relation to the patent, pr eviously provided to the Commissioner for the 
Act or these Regulations. 
 
     (1B)  For subsection 101D (1) of the Act,  a patentee informs the Commissioner of the results of 
documentary searches by or on behalf of the Eur opean Patent Office or the UK Patent Office: 
  (a) by providing:    (i) a list of the documents cited by the patent office; and 
 
             (ii) for a list provided on or after 26 August 2003 — the symbols used by the 
patent office to indicate the relevance of the documents; or 
  (b) by providing a copy of the search report issued by the patent office. 
 IP/N/1/AUS/P/6 
Page 414  
 
[5] Subregulation 9A.2A (3) 
 
     substitute 
 
     (3) For subsection 101D (3) of the Act, completed , in relation to a search, has the meaning given 
by regulation 1.3A. 
 
[6] After regulation 9A.2A 
 
     insert 
 
9A.2B Prescribed documentary searches by or  on behalf of a foreign patent office 
 
 For paragraph 101D (1) (a) of the Act, the fo llowing documentary searches by or on behalf of 
a foreign patent office are prescribed (so that information need not be given to the 
Commissioner): 
  (a) a search that produces a nil result;   (b) if the application for the patent was c onverted to an innovation patent application 
from a standard patent application by an amendment under section 104 of the Act: 
 
              (i) a search, the result of  which was disclosed under subsection 45 (3) of the Act 
in relation to the standard  patent application; and 
               (ii) a search prescribed in  regulation 3.17B in relatio n to the standard patent 
application; 
  (c) if the application for the patent was an application which the patentee was permitted 
to make under subsection 79B (1) or 79C (1) of the Act ( a divisional application ) — 
a search, the result of which was disclosed under subsection 45 (3) or 101D (1) of the Act in relation to the first-mentioned appli cation in subsection 79B (1) of the Act or 
the first patent in subsection 79C (1) of the Act for the divisional application;  
  (d) a search, other than a search by or on beha lf of the European Patent Office or the UK 
Patent Office, the result of which has already been given to the Commissioner under subsection 101D (1) of the Act in relation to the patent; 
 
 (e) a search, the result of which was not received by the patentee.  
[7] Paragraph 22.2C (1) (a) 
 
     omit 
 
 237 or 238  
     insert 
  237, 238 or 239 
 IP/N/1/AUS/P/6 
Page 415 
 
 
[8] Subregulation 22.15 (2) 
 
     substitute 
 
     (2) Any other document that is filed must be in English, other than: 
 
 (a) a document that has been translated in to English and that has with it a related 
certificate of verification; or 
  (b) a document containing search results fi led under subsection 45 (3) or 101D (1) of the 
Act. 
 
[9] Schedule 7, after item 238 
 
     insert 
 
239 Filing an application to the Commissioner, for an extension of 
time under subregulation 3.17A (5):   
 (a)  if the application is filed on  or before the date on which 
notice of acceptance is published 
 $100 per month or 
part of a month 
 (b)  if the application is filed after the date on which notice 
of acceptance is published 
 $150 per month or 
part of a month 
__________________________________________________________________________________ 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387; 1995 Nos. 16, 20, 82  and 427; 1996 No. 271; 1997 Nos. 192 
and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 2000 No. 317; 
2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173, 263 and 317; 2003 No. 71. 
 
2. Notified in the Commonwealth of Australia Gazette  on 21 August 2003. IP/N/1/AUS/P/6 
Page 416  
 
 
 
Patents Amendment Regulations 2003 (No. 3)1 
 
Statutory Rules 2003 No. 3162 
__________________________________________________________________________________ 
 I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Patents Act 
1990 . 
  Dated 4 December 2003  
 
  
P. M. JEFFERY 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 417 
 
 
Contents 
 
 1 Name of Regulations   2 Commencement 
 
 3 Amendment of Patents Regulations 1991  
  4 Transitional  Schedule 1 Amendments commencing on gazettal  Schedule 2 Amendments commencing on 1 January 2004 
 
_______________ 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2003 (No. 3).  
 
2 Commencement 
 
 These Regulations commence as follows:   (a) on gazettal — regulations 1 to 4 and Schedule 1.  
 (b) on 1 January 2004 — Schedule 2. 
 
3 Amendment of Patents Regulations 1991  
 
 Schedules 1 and 2 amend the Patents Regulations 1991 . 
 4 Transitional 
 
     (1) The amendments made by items [7] to  [171] of Schedule 2 apply to an international 
application if the international filing date of the application is a date on or after 1 January 2004. 
 
     (2) However: 
  (a) the amendments made by items [50] and [171] of Schedule 2 do not apply to an 
international  application that is filed before 1 January 2004 but is given an 
international filing date that is  on or after 1 January 2004; and 
 
 (b) the amendments made by items [44], [104], [105], [106], [108], [114] to [125] 
and [166] of Schedule 2 also apply to an international application that was filed 
before 1 January 2004 if a demand for inte rnational preliminary examination of the 
application is filed on or  after 1 January 2004; and 
 
 (c) the amendments made by items [143] to [145] of Schedule 2 also apply to an 
international application that was file d before 1 January 2004, for which an 
international preliminary examination report is established on or after 1 January 2004; 
and 
 IP/N/1/AUS/P/6 
Page 418  
 
 (d) the amendment made by item [170] of Schedule 2 also applies to the giving, on or 
after 1 January 2004, of copies of an inte rnational preliminary examination report for 
an application that was filed before 1 January 2004. 
 
Schedule 1 Amendments commencing on gazettal 
  (regulation 3) 
 
[1] Subregulation 3.1 (1) 
 
     omit 
 
 abstract, and a copy of the abstract are  
     insert 
  abstract is 
 
[2] Subregulation 10.1 (5) 
 
     omit 
  allowance of those amendments. 
 
     insert 
 
 leave is granted under regulation 10.5 to amend the patent request or complete specification 
or another filed document. 
 
Schedule 2 Amendments commencing on 1 January 2004 
  (regulation 3) 
   
[1] Subregulation 1.4 (2) 
 
     omit 
 
 1 January 2003       insert 
 
 1 January 2004  
[2] After subregulation 8.3 (1) 
 
     insert 
 
     (1A) Section 53: 
 
     omit 
 
 Where  IP/N/1/AUS/P/6 
Page 419 
 
 
     insert 
 
     (1) Where       (1B) Section 53: 
 
     insert 
 
     (2) For a PCT application, the prescribed information is taken to have been published under 
subsection (1) when the application is publishe d by the International Bureau of the World 
Intellectual Property Organization. 
 
[3] Subparagraph 22.2 (4) (a) (ii) 
 
     omit 
 
 1 to 4 of Part 4,  
     insert 
 
 401 to 404, 
 
[4] Subregulation 22.4 (1) 
 
     omit 
  Subject to subregulation (1A) if, 
 
     insert 
 
 If,  [5] Subregulation 22.4 (1) 
 
     omit 
 
 basic fee, designation fees 
 
     insert 
 
 international filing fee  
[6] Subregulations 22.4 (1A) to (1C), including note 
 
     omit 
 
[7] Schedule 2A, Adoption and amendment dates, before the Table of Provisions 
 
     omit 
 
 October 3, 2001 and on October 1, 2002.  IP/N/1/AUS/P/6 
Page 420  
 
     insert 
 
 October 3, 2001, on October 1, 2002 and on October 1, 2003.  
[8] Schedule 2A, Table of Provisions 
 
     omit 
 
     4.9 Designation of States       insert 
 
     4.9 Designation of States; Kinds of  Protection; National and Regional Patents 
 
[9] Schedule 2A, Table of Provisions 
 
     omit 
 
     4.11 Reference to Earlier Search  
     insert 
 
     4.11 Reference to Earlier Search, Continuation or Continuation-in -Part, or Parent Application or 
Grant 
 
[10] Schedule 2A, Table of Provisions 
 
omit 
 
     4.12 Choice of Certain Kinds of Protection       4.13 Identification of Parent Application or Parent Grant 
 
     4.14 Continuation or Continuation in Part  
[11] Schedule 2A, Table of Provisions 
 
     omit 
 
     15.1 Basic Fee and Designation Fee       15.2 Amounts       insert 
 
     15.1 The International Filing Fee       15.2 Amount 
 IP/N/1/AUS/P/6 
Page 421 
 
 
[12] Schedule 2A, Table of Provisions 
 
     omit 
 
     15.5 Fees under Rule 4.9 ( c) 
 
[13] Schedule 2A, Table of Provisions 
 
     after 
       26.2 Time Limit for Correction 
 
     insert 
 
      26.2 bis Checking of Requirements under Article 14 (1) ( a) (i) and (ii) 
 
[14] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 29 International Applications or  Designations Considered Withdrawn  
 
     insert 
 
Rule 29 International Appli cations Considered Withdrawn 
 [15] Schedule 2A, Table of Provisions 
 
     omit 
 
      32.1 Request for Extension of International Application to Successor State       insert 
 
      32.1 Extension of International Application to Successor State  
[16] Schedule 2A, Table of Provisions 
 
     after 
 
      43.10 Form  
     insert 
 
Rule 43 bis Written Opinion of the International Searching Agency 
 
 43 bis.1 Written Opinion 
 IP/N/1/AUS/P/6 
Page 422  
 
[17] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 44 Transmittal of the International Search Report, Etc. 
 
 44.1 Copies of Report or Declaration  
     insert 
 Rule 44 Transmittal of the Internationa l Search Report, Written Opinion, Etc. 
  44.1 Copies of Report or Declaration and Written Opinion 
 
[18] Schedule 2A, Table of Provisions 
 
     after 
 
      44.3 Copies of Cited Documents  
     insert 
 
Rule 44 bis International Preliminary Report on Patentability by the International Searching 
Authority 
 
 44 bis.1 Issuance of Report; Transmittal to the Applicant 
 
 44 bis.2 Communication to Designated Offices 
 
 44 bis.3 Translation for Designated Offices 
 
 44 bis.4 Observations on the Translation 
 
Rule 44 ter Confidential Nature of Written Opinion,  Report, Translation and Observations 
 
 44 ter.1 Confidential Nature 
 [19] Schedule 2A, Table of Provisions 
 
     omit 
 
      47.4 Express Request under Article 23 (2)       insert 
 
      47.4 Express Request under Article 23 (2) Prior to International Publication  IP/N/1/AUS/P/6 
Page 423 
 
 
[20] Schedule 2A, Table of Provisions 
 
     after 
 
      49.6 Reinstatement of Rights After Failure  to Perform the Acts Referred to in Article 22 
 
     insert 
 
Rule 49 bis Indications as to Protection Sought for Purposes of National Processing 
 
 49 bis.1 Choice of Certain Kinds of Protection 
 
 49 bis.2 Time of Furnishing Indications 
 
[21] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 51 bis Certain National Requirements Allowed under Article 27 (1), (2), (6) and (7) 
 
     insert 
 
Rule 51 bis Certain National Requirements Allowed under Article 27 
 
[22] Schedule 2A, Table of Provisions 
 
     after 
 
      53.9 Statement Concerning Amendments  
     insert 
 
Rule 54 bis Time Limit for Making a Demand 
 
 54 bis.1 Time Limit for Making a Demand 
 
[23] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 56 Later Elections   56.1 Elections Submitted Later Than the Demand 
 
 56.2 Identification of the International Application   56.3 Identification of the Demand  
 56.4 Form of Later Elections 
  56.5 Language of Later Elections  IP/N/1/AUS/P/6 
Page 424  
 
[24] Schedule 2A, Table of Provisions 
 
     omit 
 
 60.2 Defects in Later Elections 
 
[25] Schedule 2A, Table of Provisions 
 
     omit 
 Rule 62 Copy of Amendments Under Article 19  for the International Preliminary Examining 
Authority 
  62.1 Amendments Made before the Demand is Filed       insert 
 
Rule 62 Copy of the Written Opinion by th e International Searching Authority and of 
Amendments Under Article 19 for the Intern ational Preliminary Examining Authority 
  62.1 Copy of Written Opinion by Internatio nal Searching Authority and of Amendments 
Made before the Demand is Filed 
 
[26] Schedule 2A, Table of Provisions 
 
     after 
 
 62.2 Amendments Made after the Demand is Filed  
     insert 
 
Rule 62 bis Translation for the International Prelim inary Examining Authority of the Written 
Opinion of the International Searching Authority 
 
 62 bis.1 Translation and Observations 
 
[27] Schedule 2A, Table of Provisions 
 
     after 
 
 66.1 Basis of the International Preliminary Examination  
     insert 
 
 66.1 bis Written Opinion of the International Searching Authority 
 
[28] Schedule 2A, Table of Provisions 
 
     omit 
 
 66.2 First Written Opinion of the Intern ational Preliminary Examining Authority 
 
     insert IP/N/1/AUS/P/6 
Page 425 
 
 
  66.2 Written Opinion of the International Preliminary Examining Authority  
[29] Schedule 2A, Table of Provisions 
 
     omit 
 
 66.7 Priority Document  
     insert 
 
 66.7 Copy and Translation of Earlier Application Whose Priority is Claimed  
[30] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 70 The International Preliminary Examination Report  
     insert 
 Rule 70 International Preliminary Report on Patentability by the International Preliminary 
Examining Authority (International Preliminary Examination Report) 
 
[31] Schedule 2A, Table of Provisions 
 
     omit 
 
 70.15 Form  
     insert 
  70.15 Form; Title 
 
[32] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 72 Translation of the Interna tional Preliminary Examination Report 
 
     insert 
 
Rule 72 Translation of the International Pr eliminary Examination Report and of the Written 
Opinion of the International Searching Authority 
 
[33] Schedule 2A, Table of Provisions 
 
     after 
 
 72.2 Copy of Translation for the Applicant  
     insert 
 IP/N/1/AUS/P/6 
Page 426  
 
 72.2 bis Translation of the Written Opinion of the International Searching Authority 
Established Under Rule 43 bis.1 
 
[34] Schedule 2A, Table of Provisions 
 
     omit 
 
Rule 73 Communication of the International Preliminary Examination Report  
     insert 
 
Rule 73 Communication of the International Preliminary Examination Report or the Written 
Opinion of the International Searching Authority 
 
[35] Schedule 2A, Table of Provisions 
 
     omit 
 
 73.2 Time Limit for Communication  
     insert 
 
 73.2 Communication to Elected Offices  
[36] Schedule 2A, Table of Provisions 
 
     omit 
 
 76.5 Application of Rules 22.1 (g), 49 and 51 bis 
 
     insert 
 
 76.5 Application of Rules 22.1 ( g), 47.1, 49, 49 bis and 51 bis 
 
[37] Schedule 2A, Table of Provisions 
 
     omit 
 
 76.6 Transitional Provision  
[38] Schedule 2A, Table of Provisions 
 
omit 
 
 78.1 Time Limit Where Election Is Effect ed prior to Expiration of 19 Months from 
Priority Date 
  78.2 Time Limit Where Election Is Effected After Expiration of 19 Months from Priority 
Date 
 
insert 
 
 78.1 Time Limit IP/N/1/AUS/P/6 
Page 427 
 
 
 
[39] Schedule 2A, Table of Provisions 
 
     omit 
  80.5 Expiration on a Non-Working Day 
 
     insert 
 
 80.5 Expiration on a Non-Working Day or Official Holiday 
 
[40] Schedule 2A, Table of Provisions 
 
     after 
  89.3 Publication and Entry into Force 
 
     insert 
 
Rule 89 bis Filing, Processing and Communication of International Applications and Other 
Documents in Electronic Form or by Electronic Means 
 
 89 bis.1 International Applications 
 
 89 bis.2 Other Documents 
 
 89 bis.3 Communication Between Offices 
 
[41] Schedule 2A, Table of Provisions 
 
     after 
  93.4 Reproductions 
 
     insert 
 
Rule 93 bis Manner of Communication of Documents 
 
 93 bis.1 Communication on Request; Communication via Digital Library 
 
[42] Schedule 2A, subparagraphs 4.1 (a) (iv) and (v) 
 
     substitute 
 
• (iv) indications concerning the inventor wher e the national law of at least one of the 
designated States requires that the name of the inventor be furnished at the time of filing a 
national application.  
 IP/N/1/AUS/P/6 
Page 428  
 
[43] Schedule 2A, subparagraphs 4.1 (b) (iii) to (vi) 
 
     substitute 
 
• (iii) a reference to a parent a pplication or a parent patent, 
 
• (iv) an indication of the applicant’s choice of competent International Searching 
Authority. 
 
[44] Schedule 2A, paragraph 4.5 (a) 
 
     substitute 
 
 ( a) The request shall indicate: 
 
•        (i) the name,  
 
•        (ii) the address, and 
 
•        (iii) the nationality and residence  
 of the applicant or, if there are sev eral applicants, of each of them. 
 
[45] Schedule 2A, Rule 4.9 
 
     substitute  
4.9   Designation of States ; Kinds of Protection; National and Regional Patents 
  ( a) The filing of a request shall constitute: 
 
•              (i) the designation of all Contracting States that are bound by the Treaty on the 
international filing date; 
 
•              (ii) an indication that th e international application is, in respect of each 
designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; 
 
•              (iii) an indication that th e international application is, in respect of each 
designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45( 2) applies, a national patent. 
  ( b) Notwithstanding paragraph ( a)(i), if, on October 1, 2002, the national law of a 
Contracting State provides that the filing of an  international application which contains the 
designation of that State and claims the priority of an earlier national application having effect in that 
State shall have the result that the earlier nationa l application ceases to have effect with the same 
consequences as the withdrawal of the earlier national application, any request may, for as long as that 
national law continues to so provide, contain an in dication that the designation of that State is not 
made, provided that the designated Office informs th e International Bureau by January 1, 2003, that 
this paragraph shall apply in resp ect of designations of that State. The information received shall be 
promptly published by the International Bureau in the Gazette.  
[46] Schedule 2A, Rule 4.11 IP/N/1/AUS/P/6 
Page 429 
 
 
 
     substitute 
 
4.11   Reference to Earlier Search , Continuation or Continuation-in-Part, or Parent Application or 
Grant 
 
(a) If: 
 
•              (i) an international or international-type search has been requested on an 
application under Article 15(5); 
 
•              (ii) the applicant wishes the International Searching Authority to base the 
international search report wholly or in part on the results of a search, other 
than an international or international- type search, made by the national Office 
or intergovernmental organization wh ich is the International Searching 
Authority competent for the international application; 
 
•              (iii) the applicant intends to make an indication under Rule 49 bis.1(a) or ( b) of 
the wish that the international applicatio n be treated, in any designated State, 
as an application for a patent of additi on, certificate of addition, inventor’s 
certificate of addition or utility certificate of addition; or 
 
•              (iv) the applicant intends to make an indication under Rule 49 bis.1(d) of the wish 
that the international application be treated, in any designated State, as an 
application for a continuation or a continuation-in-part of an earlier 
application; 
 the request shall so indicate and shall, as the case may be, identify the application in respect of which 
the earlier search was made or otherwise identify the search, or indicate the relevant parent 
application or parent patent  or other parent grant. 
  ( b) The inclusion in the request of  an indication under paragraph ( a)(iii) or (iv) shall have 
no effect on the operation of Rule 4.9. 
 
[47] Schedule 2A, Rules 4.12 to 4.14 
 
     omit 
 
[48] Schedule 2A, paragra phs 12.3 (e) and 12.4 (e) 
 
     omit 
 
 50% of the basic fee referred to in item 1 (a) of the Schedule of Fees.       insert 
 
 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking 
into account any fee for each sheet of the in ternational application in excess of 30 sheets. 
 IP/N/1/AUS/P/6 
Page 430  
 
[49] Schedule 2A, Rules 15.1 and 15.2 
 
     substitute 
 
15.1   The International Filing Fee  
 
Each international application shall be subject to the payment of a fee for the benefit of the 
International Bureau (“international filing f ee”) to be collected by the receiving Office. 
 
15.2   Amount  
 
 ( a) The amount of the international filing fee is as set out in the Schedule of Fees. 
  ( b) The international filing fee shall be payabl e in the currency or one of the currencies 
prescribed by the receiving Office (“prescribed curre ncy”), it being understood that, when transferred 
by the receiving Office to the International Bureau, it shall be freely convertible into Swiss currency. 
The amount of the international filing fee shall be established, for each receiving Office which 
prescribes the payment of that fee in any currency ot her than Swiss currency, by the Director General 
after consultation with the receiving Office of, or acting under Rule 19.1( b) for, the State whose 
official currency is the same as  the prescribed currency. The amount so established shall be the 
equivalent, in round figures, of the amount in Swiss currency set out in the Schedule of Fees. It shall 
be notified by the International Bureau to each  receiving Office prescribing payment in that 
prescribed currency and shall be published in the Gazette. 
  ( c) Where the amount of the international filing fee set out in the Schedule of Fees is 
changed, the corresponding amount in the prescribed currencies shall be applied from the same date 
as the amount set out in the amended Schedule of Fees. 
  ( d) Where the exchange rate between Swi ss currency and any prescribed currency 
becomes different from the exchange rate last appl ied, the Director General shall establish the new 
amount in the prescribed currency according to directives given by the Assembly. The newly 
established amount shall become applicable two m onths after the date of its publication in the 
Gazette, provided that the receiving Office refe rred to in the second sentence of paragraph ( b) and the 
Director General may agree on a date falling during the said two-month period, in which case the said amount shall become applicable from that date.  
[50] Schedule 2A, paragraphs 15.4 (a), (b) and (c) 
 
     substitute 
 
 The international filing fee shall be paid within one month from the date of receipt of the international application. The amount payable shall be the amount applicable on that date of receipt. 
 [51] Schedule 2A, Rule 15.5 
 
     omit 
 
[52] Schedule 2A, Rule 15.6 
 
     omit 
 
 international fee       insert IP/N/1/AUS/P/6 
Page 431 
 
 
  international filing fee  
[53] Schedule 2A, paragraph 16.1 (f) 
 
     omit 
 
Rule 15.4 (a) relating to the basic  
     insert 
 
Rule 15.4 relating to the international filing  
[54] Schedule 2A, paragraph 16 bis.1 (a) 
 
     omit 
 
 basic  
     insert 
  international filing 
 
[55] Schedule 2A, paragraph 16 bis.1 (b) 
 
     omit 
 
[56] Schedule 2A, paragraph 16 bis.1 (c) 
 
     omit 
 
 or (b) 
 
[57] Schedule 2A, subparagraph 16 bis.1 (c) (i) 
 
     omit 
 
[58] Schedule 2A, subparagraphs 16 bis.1 (c) (ii) and (iii) 
 
renumber as paragraphs 16 bis.1 (c) (i) and (ii) 
 
[59] Schedule 2A, paragraph 16 bis.1 (d) 
 
     omit 
 
 paragraph (a) or (b)  
     insert 
 
 paragraph ( a) 
 
[60] Schedule 2A, paragraph 16 bis.1 (d) IP/N/1/AUS/P/6 
Page 432  
 
 
     omit 
 
 15.4 (a) or (b)       insert 
 
 15.4  
[61] Schedule 2A, paragraph 16 bis.1 (e) 
 
     omit 
 
 (a) or (b).       insert 
 
 ( a). 
 
[62] Schedule 2A, paragraph 16 bis.2 (a) 
 
     omit 
 
 (a) or (b)  
     insert 
 
 ( a) 
 
[63] Schedule 2A, paragraph 16 bis.2 (b) 
 
     substitute 
 
     (b) The amount of the late payment fee shall not, however, exceed the amount of 50% of the 
international filing fee referred to in item 1 of the Schedule of F ees, not taking into account any fee 
for each sheet of the international application in excess of 30 sheets. 
 [64] Schedule 2A, paragraph 17.1 (a) 
 
     omit 
 
 already       insert 
 
 that priority docume nt has already been 
 IP/N/1/AUS/P/6 
Page 433 
 
 
[65] Schedule 2A, paragraph 17.1 (a) 
 
     omit 
 
 paragraph (b), 
 
     insert 
 
 paragraphs ( b) and ( bbis), 
 [66] Schedule 2A, after paragraph 17.1 (b) 
 
     insert 
 
 ( bbis) Where the priority document is, in accorda nce with the Administrative Instructions, 
available to the receiving Office or to the Interna tional Bureau from a digital library, the applicant 
may, as the case may be, instead of submitting the priority document: 
 
•              (i) request the receiving Offi ce to obtain the priority document from such digital 
library and transmit it to the International Bureau; or 
 
•              (ii) request the Internati onal Bureau to obtain the priority document from such 
digital library. 
 
Such request shall be made not later than 16 months  after the priority date and may be subjected by 
the receiving Office or the Internationa l Bureau to the payment of a fee. 
 
[67] Schedule 2A, paragraph 17.1 (c) 
 
     omit 
 
 neither of the two preceding paragraphs ar e complied with, any designated State may  
      insert 
 
 none of the three preceding paragraphs are co mplied with, any designated Office may, subject 
to paragraph ( d),  
 
[68] Schedule 2A, after paragraph 17.1 (c) 
 
     insert 
 (d) No designated Office shall disregar d the priority claim under paragraph ( c) if the 
earlier application referred to in paragraph ( a) was filed with it in its capacity as national Office or if 
the priority document is, in acco rdance with the Administrative In structions, available to it from a 
digital library. 
 
[69] Schedule 2A, paragraph 17.2 (a) 
 
     omit 
  Rule 17.1 (a) or (b), 
 IP/N/1/AUS/P/6 
Page 434  
 
     insert 
 
 Rule 17.1 ( a), (b) or ( bbis) 
 
[70] Schedule 2A, paragraph 19.4 (c) 
 
     omit 
 
 (a) to (c)  [71] Schedule 2A, paragraph 24.2 (a) 
 
     omit 
 
 States designated under Rule 4.9 ( a) and, where applicable, of those States whose 
designations have been confirmed under Rule 4.9 ( c). 
 
     insert 
 
 designated Offices and, in the case of a designa ted Office which is responsible for granting 
regional patents, of the Contracting St ates designated for such regional patent. 
 
[72] Schedule 2A, paragraph 24.2 (b) 
 
     omit 
 
[73] Schedule 2A, after Rule 26.2  
 
     insert 
 
26.2bis   Checking of Requirements Under Article 14(1)(a)(i) and (ii)  
 
     (a) For the purposes of Article 14(1)( a)(i), if there is more than one applicant, it shall be 
sufficient that the request be signed by one of them.       (b) For the purposes of Article 14(1)( a)(ii), if there is more than one applicant, it shall be 
sufficient that the indications required under Rule 4.5( a)(ii) and (iii) be provided in respect of one of 
them who is entitled according to Rule 19.1 to file the international application with the receiving 
Office.  
[74] Schedule 2A, paragraph 27.1 (a) 
 
     omit 
 
 basic fee part of the international fee (Rule 15.1 (i)),   
     insert 
  international filing fee (Rule 15.1),  
 IP/N/1/AUS/P/6 
Page 435 
 
 
[75] Schedule 2A, paragraph 27.1 (b) 
 
     omit 
 
 designation fee part of the international fee (Rule 15.1 (ii))  
 
     insert 
 
 international filing fee (Rule 15.1)  [76] Schedule 2A, Rule 29, heading  
 
     substitute 
 
Rule 29 
International Applicatio ns Considered Withdrawn 
 
[77] Schedule 2A, paragraph 29.1 (a) 
 
     omit 
  ( a)   If 
 
     insert 
 
 If 
 
[78] Schedule 2A, paragraph 29.1 (b) 
 
     omit 
 
[79] Schedule 2A, Rule 32.1, heading 
 
     substitute 
 
32.1   Extension of International Application to Successor State 
 [80] Schedule 2A, paragraph 32.1 (a) 
 
     omit 
 
 may, subject to the performance by the app licant of the acts specified in paragraph ( c), be 
      insert 
 
 are  IP/N/1/AUS/P/6 
Page 436  
 
[81] Schedule 2A, paragraph 32.1 (a) 
 
     after 
 
 territory of a Contracting State 
 
     insert 
 
 designated in the international application  [82] Schedule 2A, paragraphs 32.1 (c) and (d) 
 
     substitute 
 
     (c) Information on any international application w hose filing date falls within the applicable 
period under paragraph (b) a nd whose effect is extended to the successor State shall be published by 
the International Bureau in the Gazette.  
[83] Schedule 2A, paragraph 32.2 (a) 
 
     omit 
 
 a request for extension is made  
     insert 
  the effects of the international app lication are extended to the successor State 
 
[84] Schedule 2A, subparagraph 32.2 (a) (ii) 
 
     omit 
  three months from the date of the request for extension. 
 
     insert 
 
 six months from the date of the publication of the information under Rule 32.1( c). 
 
[85] Schedule 2A, paragraph 32.2 (b) and (c) 
 
     substitute 
 
     (b) The successor State may fix a time limit which expires later than that provided in 
paragraph ( a)(ii). The International Bureau shall publis h information on such time limits in the 
Gazette.  
[8] Schedule 2A, subparagraph 36.1 (iii) 
 
     omit 
 translated. 
 IP/N/1/AUS/P/6 
Page 437 
 
 
     insert 
 
 translated;  
[87] Schedule 2A, after subparagraph 36.1 (iii) 
 
     insert 
 
•              (iv) that Office or organi zation must hold an appoin tment as an International 
Preliminary Examining Authority. 
 [88] Schedule 2A, after Rule 43 
 
     insert 
 
Rule 43 bis 
Written Opinion of the International Searching Authority 
 
43bis.1   Written Opinion 
 
     (a) Subject to Rule 69.1( bbis), the International Searching Author ity shall, at the same time as it 
establishes the international search report, establish a written opinion as to: 
 
•              (i) whether the claimed invention appears to be novel, to involve an inventive 
step (to be non-obvious), and to be industrially applicable; 
 
•              (ii) whether the internati onal application complies with the requirements of the 
Treaty and these Regulations in so fa r as checked by the International 
Searching Authority. 
 
The written opinion shall also be accompanied by  such other observations as these Regulations 
provide for.       (b) For the purposes of establishing the written opinion , Articles 33(2) to (6), 35(2) and 35(3) and 
Rules 43.4, 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 . 
      (c) The written opinion shall contain a notification informing the applicant that, if a demand for 
international preliminary examination is ma de, the written opinion shall, under Rule 66.1 bis(a) but 
subject to Rule 66.1 bis(b), be considered to be a written opinion of the International Preliminary 
Examining Authority for the purposes of Rule 66.2( a), in which case the applicant is invited to submit 
to that Authority, before the expi ration of the time limit under Rule 54 bis.1(a), a written reply 
together, where appropriate, with amendments.  
[89] Schedule 2A, Rule 44, heading 
 
     substitute 
 
Rule 44 
Transmittal of the International Search Report, Written Opinion, Etc. 
 IP/N/1/AUS/P/6 
Page 438  
 
[90] Schedule 2A, Rule 44.1  
 
     substitute 
 
44.1   Copies of Report or Declaration and Written Opinion  
 
 The International Searching Authority shall,  on the same day, transmit one copy of the 
international search report and the written opinion established under Rule 43 bis.1, or of the 
declaration referred to in Article 17(2)( a), to the International Bureau and one copy to the applicant. 
 [91] Schedule 2A, after Rule 44  
 
     insert 
 
Rule 44 bis  
International Preliminary Report on Patentability by 
the International Searching Authority 
 
44bis.1   Issuance of Report; Transmittal to the Applicant 
      (a) Unless an international preliminary examination report has been or is to be established, the 
International Bureau shall issue a report on behalf of the International Searching Authority (in this 
Rule referred to as “the report”) as to  the matters referred to in Rule 43 bis.1(a). The report shall have 
the same contents as the written opinion established under Rule 43 bis.1. 
      (b) The report shall bear the title “international pr eliminary report on patentability (Chapter I of 
the Patent Cooperation Treaty)” together with an i ndication that it is issued under this Rule by the 
International Bureau on behalf of the International Searching Authority.       (c) The International Bureau shall promptly tr ansmit one copy of the report issued under 
paragraph ( a) to the applicant. 
 
44bis.2   Communication to Designated Offices 
 
     (a) Where a report has been issued under Rule 44 bis.1, the International Bureau shall 
communicate it to each designated O ffice in accordance with Rule 93 bis.1 but not before the 
expiration of 30 months from the priority date. 
 
     (b) Where the applicant makes an express request to a designated Office under Article 23(2), the 
International Bureau shall communicate a copy of the written opinion established by the International 
Searching Authority under Rule 43 bis.1 to that Office promptly upon the request of that Office or of 
the applicant. 
 
44bis.3   Translation for Designated Offices 
 
     (a) Any designated State may, where a report has been issued under Rule 44 bis.1 in a language 
other than the official language, or one of the o fficial languages, of its national Office, require a 
translation of the report into English. Any such requirement shall be notified to the International 
Bureau, which shall promptly publish it in the Gazette. 
 IP/N/1/AUS/P/6 
Page 439 
 
 
     (b) If a translation is required under paragraph ( a), it shall be prepared by or under the 
responsibility of the International Bureau.       (c) The International Bureau shall transmit a copy of the translation to any interested designated 
Office and to the applicant at the same time as it communicates the report to that Office. 
 
     (d) In the case referred to in Rule 44 bis.2(b), the written opinion established under Rule 43 bis.1 
shall, upon request of the designated Office concerne d, be translated into English by or under the 
responsibility of the International Bureau. The Inte rnational Bureau shall transmit a copy of the 
translation to the designated Office concerned with in two months from the date of receipt of the 
request for translation, and shall at the sa me time transmit a copy to the applicant. 
 
44bis.4   Observations on the Translation 
  The applicant may make written observations as to the correctness of th e translation referred 
to in Rule 44 bis.3(b) or ( d) and shall send a copy of the observations to each of the interested 
designated Offices and to the International Bureau.  
Rule 44 ter  
Confidential Nature of Wr itten Opinion, Report, Translation and Observations 
 
44ter.1   Confidential Nature 
      (a) The International Bureau and the Internationa l Searching Authority shall not, unless requested 
or authorized by the applicant, allow access by an y person or authority befo re the expiration of 30 
months from the priority date: 
 
•              (i) to the written opinion established under Rule 43 bis.1, to any translation 
thereof prepared under Rule 44 bis.3(d) or to any written observations on such 
translation sent by the applicant under Rule 44 bis.4; 
 
•              (ii) if a report is issued under Rule 44 bis.1, to that report, to any translation of it 
prepared under Rule 44 bis.3(b) or to any written observations on that 
translation sent by the applicant under Rule 44 bis.4. 
      (b) For the purposes of paragraph ( a), the term “access” covers any means by which third parties 
may acquire cognizance, including individua l communication and general publication. 
 
[92] Schedule 2A, paragraphs 47.1 (a) and (a bis) 
 
     substitute 
 
     (a) The communication provided for in Article 20 sha ll be effected by the International Bureau to 
each designated Office in accordance with Rule 93 bis.1 but, subject to Rule 47.4, not prior to the 
international publication of th e international application. 
 
     (abis) The International Bureau shall notify each  designated Office, in accordance with 
Rule 93 bis.1, of the fact and date of receipt of the record copy and of the fact and date of receipt of 
any priority document.  
 IP/N/1/AUS/P/6 
Page 440  
 
[93] Schedule 2A, paragraphs 47.1 (b) and (c) 
 
     substitute 
 
     (b) Any amendment received by the International Bureau within the time limit under Rule 46.1 
which was not included in the communication prov ided for in Article 20 shall be communicated 
promptly to the designated Offices by the Internati onal Bureau, and the latter shall notify the applicant 
accordingly.       (c) The International Bureau shall, promptly afte r the expiration of 28 months from the priority 
date, send a notice to the applicant indicating: 
 
•              (i) the designated Offices which have requested that the communication 
provided for in  Article 20 be effected under Rule 93 bis.1 and the date of 
such communication to those Offices; and 
 
•              (ii) the designated Offices  which have not requested that the communication 
provided for in Article 20 be effected under Rule 93 bis.1. 
 
     (cbis)   The notice referred to in paragraph ( c) shall be accepted by designated Offices: 
 
•              (i) in the case of a designated Office referred to in paragraph ( c)(i), as conclusive 
evidence that the communication provided for in Article 20 was effected on 
the date specified in the notice; 
 
•              (ii) in the case of a designated Office referred to in paragraph ( c)(ii), as 
conclusive evidence that the Contrac ting State for which that Office acts as 
designated Office does not require the furnishing, under Article 22, by the applicant of a copy of the international application. 
 [94] Schedule 2A, paragraph 47.1 (e) 
 
     substitute 
 
     (e) Where any designated Office has not, before the expiration of 28 months from the priority 
date, requested the International Bureau to effect  the communication provided for in Article 20 in 
accordance with Rule 93 bis.1, the Contracting State for which that Office acts as designated Office 
shall be considered to have notified th e International Bureau, under Rule 49.1( abis), that it does not 
require the furnishing, under Article 22, by the app licant of a copy of the international application. 
 
[95] Schedule 2A, paragraphs 47.2 (a), (b) and (c) 
 
     substitute 
 
 The copies required for communication shall be pr epared by the International Bureau. Further 
details concerning the copies required for communica tion may be provided for in the Administrative 
Instructions. 
 IP/N/1/AUS/P/6 
Page 441 
 
 
[96] Schedule 2A, Rule 47.4 
 
     substitute 
 
47.4   Express Request Under Article 23(2) Pr ior to International Publication 
 
 Where the applicant makes an express request to a designated Office under Article 23(2) prior 
to the international publication of the internationa l application, the International Bureau shall, upon 
request of the applicant or the designated Office, promptly effect the communication provided for in 
Article 20 to that Office. 
 
[97] Schedule 2A, paragraph 48.6 (a) 
 
     omit 
  Rule 29.1 ( a) (ii) 
 
     insert 
 
 Rule 29.1 (ii)  [98] Schedule 2A, after Rule 49  
 
     insert 
 
Rule 49 bis  
Indications as to Protection Sought for Purposes of National Processing 
 
49bis.1   Choice of Certain Kinds of Protection 
      (a) If the applicant wishes the intern ational application to be treat ed, in a designated State in 
respect of which Article 43 applies, as an applicatio n not for the grant of a patent but for the grant of 
another kind of protection referred to in that Article , the applicant, when performing the acts referred 
to in Article 22, shall so i ndicate to the designated Office. 
      (b) If the applicant wishes the intern ational application to be treat ed, in a designated State in 
respect of which Article 44 applies, as an application for the grant of more than one kind of protection 
referred to in Article 43, the applicant, when perfo rming the acts referred to in Article 22, shall so 
indicate to the designated Office and shall indicate, if applicable, which kind of protection is sought 
primarily and which kind is sought subsidiarily.       (c) In the cases referred to in paragraphs ( a) and ( b), if the applicant wishes the international 
application to be treated, in a designated State, as an application for a patent of addition, certificate of 
addition, inventor’s certificate of addition or u tility certificate of addition, the applicant, when 
performing the acts referred to in Article 22, shall indicate the relevant parent application, parent 
patent or other parent grant.       (d) If the applicant wishes the international applica tion to be treated, in a designated State, as an 
application for a continuation or a continuation-in-par t of an earlier application, the applicant, when 
performing the acts referred to in Article 22, sha ll so indicate to the designated Office and shall 
indicate the relevant parent application.  IP/N/1/AUS/P/6 
Page 442  
 
     (e) Where no express indication under paragraph ( a) is made by the applicant when performing 
the acts referred to in Article 22 but the national f ee referred to in Article 22 paid by the applicant 
corresponds to the national fee for a particular kind of protection, the payment of that fee shall be 
considered to be an indication of the wish of the a pplicant that the international application is to be 
treated as an application for that kind of prot ection and the designated Office shall inform the 
applicant accordingly. 
 
49bis.2   Time  of Furnishing Indications  
      (a) No designated Office shall require the appli cant to furnish, before performing the acts 
referred to in Article 22, any in dication referred to in Rule 49
bis.1 or, where applicable, any indication 
as to whether the applicant seeks the grant of a national patent or a regional patent.       (b) The applicant may, if so permitted by the national law applicable by the designated Office 
concerned, furnish such indication or, if applicable, convert from one kind of protection to another, at 
any later time. 
 
[99] Schedule 2A, Rule 51.1 
 
     omit 
  24.2 ( c), 29.1 ( a) (ii), or 29.1 ( b). 
 
     insert 
 
 24.2( c) or 29.1(ii). 
 
[100] Schedule 2A, Rule 51 bis, heading 
 
     substitute 
 
Rule 51 bis  
Certain National Requirements Allowed Under Article 27 
 
[101] Schedule 2A , subparagraph 51 bis.1 (a) (v) 
 
     omit 
 
 time.  
     insert 
 
 time; 
 
[102] Schedule 2A, after subparagraph 51 bis.1 (a) (v) 
 
     insert 
 
•              (vi) the confirmation of th e international application by the signature of any 
applicant for the designated State who has not signed the request; 
 IP/N/1/AUS/P/6 
Page 443 
 
 
•              (vii) any missing indication required under Rule 4.5( a)(ii) and (iii) in respect of 
any applicant for the designated State. 
 
[103] Schedule 2A, paragraph 52.1 (a) 
 
     omit 
 
 other  
     insert 
  later 
 
[104] Schedule 2A, subparagra phs 53.2 (a) (iv) and (v) 
 
     substitute 
 
•              (iv) where applicable, a statement concerning amendments.  
 
[105] Schedule 2A, Rule 53.4 
 
     omit 
  Only applicants for the elected States ar e required to be indicated in the demand. 
 
[106] Schedule 2A, paragraphs 53.7 (a) and (b) 
 
     substitute 
 
 The filing of a demand shall constitute the el ection of all Contracting States which are 
designated and are bound by Chapter II of the Treaty.  
[107] Schedule 2A, after Rule 54  
 
     insert 
 
Rule 54 bis  
Time Limit for Making a Demand 
 
54bis.1   Time Limit for Making a Demand 
      (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 and the written opinion established under Rule 43 bis.1, or of the 
declaration referred to in Article 17(2)( a); or 
 
•              (ii) 22 months from the priority date. 
      (b) Any demand made after the expiration of the time limit applicable under paragraph ( a) shall 
be considered as if it had not been submitted and the International Preliminary Examining Authority 
shall so declare. IP/N/1/AUS/P/6 
Page 444  
 
 
[108] Schedule 2A, Rule 56  
 
     omit 
 
[109] Schedule 2A, Rule 57.3 
 
     substitute 
 
57.3   Time Limit for Payment; Amount Payable  
 
     (a) Subject to paragraphs ( b) and ( c), the handling fee shall be paid within one month from the 
date on which the demand was submitted or 22 months  from the priority date, whichever expires later. 
      (b) Subject to paragraph ( c), where the demand was transmitted to the International Preliminary 
Examining Authority under Rule 59.3, the handling fee shall be paid within one month from the date 
of receipt by that Authority or 22 months fro m the priority date, whichever expires later. 
      (c) Where, in accordance with Rule 69.1( b), the International Preliminary Examining Authority 
wishes to start the international preliminary examina tion at the same time as the international search, 
that Authority shall invite the applicant to pay th e handling fee within one month from the date of the 
invitation. 
      (d) The amount of the handling fee payable sha ll be the amount applicable on the date of 
payment.  [110] Schedule 2A, subparagraph 57.6 (ii) 
 
     omit 
 
 Rule 54.4,       insert 
 
 Rule 54.4 or 54 bis.1(b), 
 
[111] Schedule 2A, paragraph 58 bis.1 (a) 
 
     substitute 
 
     (a) Where the International Preliminary Examining Authority finds: 
 
•              (i) that the amount paid to it is insufficient to cover the handling fee and the 
preliminary examination fee; or 
 
•              (ii) by the time they are due under Rules 57.3 and 58.1( b), that no fees were paid 
to it; 
 the Authority shall invite the applicant to pay to it the amount required to cover those fees, together 
with, where applicable, the late payment fee under Rule 58 bis.2, within a time limit of one month 
from the date of the invitation. 
 
[112] Schedule 2A, subparagraph 59.3 (c) (ii) IP/N/1/AUS/P/6 
Page 445 
 
 
 
     omit 
 
 15 days from the date of the invitation or 19 months from the priority date,       insert 
 
 the time limit applicable under Rule 54 bis.1(a) or 15 days from the date of the invitation, 
 
[113] Schedule 2A, Rule 60, heading  
 
     substitute 
 
Rule 60 
Certain Defects in the Demand 
 
[114] Schedule 2A, paragraph 60.1 (a) 
 
     omit 
 
 If 
 
     insert 
 
 Subject to paragraphs ( abis) and ( ater), if  
 [115] Schedule 2A, paragraph 60.1 (a) 
 
     omit 
 
 (iv),        insert 
 
 (iii),  
[116] Schedule 2A, after paragraph 60.1 (a) 
 
     insert 
 
     (abis) For the purposes of Rule 53.4, if there are two or more applicants, it shall be 
sufficient that the indications referred to in Rule 4.5( a)(ii) and (iii) be provided in respect of one of 
them who has the right according to Rule 54.2 to make a demand. 
 
     (ater) For the purposes of Rule 53.8, if there are two or more applicants, it shall be 
sufficient that the demand be signed by one of them.  
[117] Schedule 2A, paragraph 60.1 (b) 
 
     omit 
 
 contained at least one election and  IP/N/1/AUS/P/6 
Page 446  
 
[118] Schedule 2A, paragraph 60.1 (c) 
 
     omit 
 
 Subject to paragraph ( d), if 
 
     insert 
 
 If  [119] Schedule 2A, paragraph 60.1 (d)       omit 
 
[120] Schedule 2A, paragraph 60.1 (e) 
 
     omit 
 
 ( d). 
 
     insert 
 
 ( c). 
 
[121] Schedule 2A, Rule 60.2 
 
     omit 
 
[122] Schedule 2A, paragraph 61.1 (b) 
 
     omit 
  or where an election has been considered under Rule 60.1 ( d) as if it had not been made 
 
[123] Schedule 2A, paragraph 61.1 (c) 
 
     omit 
 
[124] Schedule 2A, paragraph 61.2 (b) 
 
     substitute 
 
     (b) The notification shall indicate the number and fili ng date of the international application, the 
name of the applicant, the filing date of the appli cation whose priority is claimed (where priority is 
claimed) and the date of receipt by the Internati onal Preliminary Examining Authority of the demand. 
 
[125] Schedule 2A, paragraph 61.2 (d) 
 
     substitute 
 
     (d) Where the applicant makes an express request to  an elected Office under Article 40(2) prior to 
the international publication of the international a pplication, the International Bureau shall, upon 
request of the applicant or the elected Office, pr omptly effect the communication provided for in 
Article 20 to that Office. IP/N/1/AUS/P/6 
Page 447 
 
 
 
[126] Schedule 2A, Rule 61.4 
 
     omit 
  Where a demand has been filed before the expi ration of 19 months from the priority date, the 
 
     insert 
 
 The 
 
[127] Schedule 2A, Rule 62, heading  
 
     substitute  
Rule 62 
Copy of the Written Opinion by the Int ernational Searching Authority and of  
Amendments Under Article 19 for the Inter national Preliminary Examining Authority 
 
[128] Schedule 2A, Rule 62.1 
 
     substitute  
62.1   Copy of Written Opinion by International Se arching Authority and of Amendments Made 
Before the Demand Is Filed  
  Upon receipt of a demand, or a copy thereof,  from the International Preliminary Examining 
Authority, the International Bureau shall promptly transmit to that Authority:  
•              (i) a copy of the written opinion established under Rule 43 bis.1, unless the 
national Office or intergovernmental or ganization that acted as International 
Searching Authority is also acting as International Preliminary Examining 
Authority; and 
 
•              (ii) a copy of any amendm ent under Article 19, and any statement referred to in 
that Article, unless that Authority has indicated that it has already received 
such a copy. 
 IP/N/1/AUS/P/6 
Page 448  
 
[129] Schedule 2A, after Rule 62  
 
     insert 
 
Rule 62 bis  
Translation for the International Preliminary Examining Authority 
of the Written Opinion of the International Searching Authority 
 
62bis.1   Translation and Observations 
 
     (a) Upon request of the International Prelimin ary Examining Authority, the written opinion 
established under Rule 43 bis.1 shall, when not in English or in a language accepted by that Authority, 
be translated into English by or under the responsibility of the International Bureau.       (b) The International Bureau shall transmit a c opy of the translation to the International 
Preliminary Examining Authority within two months  from the date of receipt of the request for 
translation, and shall at the same ti me transmit a copy to the applicant. 
      (c) The applicant may make written observations as to  the correctness of the translation and shall 
send a copy of the observations to the Internati onal Preliminary Examining Authority and to the 
International Bureau. 
 
[130] Schedule 2A, subparagraph 63.1 (iii) 
 
     omit 
  translated. 
 
     insert 
 
 translated;  [131] Schedule 2A, after subparagraph 63.1 (iii)  
 
     insert 
 
•              (iv) that Office or organi zation must hold an appoin tment as an International 
Searching Authority.  
 
[132] Schedule 2A, after Rule 66.1  
 
     insert 
 
66.1bis   Written Opinion of the International Searching Authority 
      (a) Subject to paragraph ( b), the written opinion established by the International Searching 
Authority under Rule 43 bis.1 shall be considered to be a written opinion of the International 
Preliminary Examining Authority for the purposes of Rule 66.2( a). 
 
     (b) An International Preliminary Examining Author ity may notify the International Bureau that 
paragraph ( a) shall not apply to the procedure before it in respect of written opinions established 
under Rule 43 bis.1 by the International Searching Aut hority or Authorities specified in the IP/N/1/AUS/P/6 
Page 449 
 
 
notification, provided that such a notification sha ll not apply to cases where the national Office or 
intergovernmental organization that acted as Intern ational Searching Authority is also acting as 
International Preliminary Examining Authority. The International Bureau shall promptly publish any 
such notification in the Gazette.  
     (c) Where the written opinion established by the In ternational Searching Authority under Rule 
43bis.1 is not, by virtue of a notification under paragraph ( b), considered to be a written opinion of the 
International Preliminary Examining Au thority for the purposes of Rule 66.2( a), the International 
Preliminary Examining Authority shall no tify the applicant accordingly in writing. 
 
     (d) A written opinion established by the International Searching Authority under Rule 43 bis.1 
which is not, by virtue of a notification under paragraph ( b), considered to be a written opinion of the 
International Preliminary Examining Authority for the purposes of Rule 66.2( a) shall nevertheless be 
taken into account by the International Preliminary Examining Authority in proceeding under Rule 66.2( a). 
 
[133] Schedule 2A, Rule 66.2, heading  
 
     substitute 
 
66.2   Written Opinion of the Internatio nal Preliminary Examining Authority 
 
[134] Schedule 2A, paragraph 66.2 (d), last sentence 
 
     substitute 
  It shall, subject to paragraph ( e), not be more than three months after the said date. 
 
[135] Schedule 2A, after paragraph 66.2 (d) 
 
     insert 
      (e) The time limit for replying to the notificati on may be extended if the applicant so requests 
before its expiration.  
[136] Schedule 2A, Rule 66.7, heading  
 
     substitute  
66.7   Copy and Translation of Earlier App lication Whose Priority is Claimed  
 
[137] Schedule 2A, paragraph 66.7 (a) 
 
     omit 
 
 Rule 17.1,  IP/N/1/AUS/P/6 
Page 450  
 
     insert 
 
 Rule 17.1, and if that earlier application was not  filed with that Authority in its capacity as a 
national Office or the priority document is not avai lable to that Authority from a digital library in 
accordance with the Admini strative Instructions,  
 
[138] Schedule 2A, paragraphs 69.1 (a) and (b) 
 
     substitute 
      (a) Subject to paragraphs ( b) to ( e), the International Preliminary Examining Authority shall start 
the international preliminary examination when  it is in possession of all of the following: 
 
•              (i) the demand; 
 
•              (ii) the amount due (in full) for the handling fee and the preliminary examination 
fee, including, where applicable, the late payment fee under Rule 58 bis.2; and 
 
•              (iii) either the intern ational search report and the written opinion established 
under Rule 43 bis.1 or a notice of the declaration by the International 
Searching Authority under Article 17(2)( a) that no international search report 
will be established; 
 
provided that the International Preliminary Examining Authority shall not start the international 
preliminary examination before the expiration of the applicable time limit under Rule 54 bis.1(a) 
unless the applicant expressly requests an earlier start.       (b) If the national Office or intergovernmental organization that acts as International Searching 
Authority also acts as International Preliminary Ex amining Authority, the international preliminary 
examination may, if that national Office or inter governmental organization so wishes and subject to 
paragraphs ( d) and ( e), start at the same time as the international search. 
 
     (bbis) Where, in accordance with paragraph ( b), the national Office or intergovernmental 
organization that acts as both International Sear ching Authority and International Preliminary 
Examining Authority wishes to start the international preliminary examination at the same time as the 
international search and considers that all of  the conditions referred to in Article 34(2)( c)(i) to (iii) are 
fulfilled, that national Office or intergovernment al organization need not, in its capacity as 
International Searching Authority, establish a written opinion under Rule 43 bis.1. 
 
[139] Schedule 2A, paragraph 69.1 (d) 
 
     substitute       (d) Where the statement concerning amendments contains an indication that the start of the 
international preliminary examination is to be postponed (Rule 53.9( b)), the International Preliminary 
Examining Authority shall not start the internationa l preliminary examination before whichever of the 
following occurs first:  
• 
             (i) it has received a copy of any amendments made under Article 19; 
 
•               (ii) it has received a notice from the applicant that he does not wish to make 
amendments under Article 19; or IP/N/1/AUS/P/6 
Page 451 
 
 
 
•              (iii) the expiration of the applicable time limit under Rule 54 bis.1(a). 
 
[140] Schedule 2A, Rule 69.2  
 
     substitute  
69.2   Time Limit for International Preliminary Examination  
  The time limit for establishing the interna tional preliminary examination report shall be 
whichever of the following periods expires last: 
 
•              (i) 28 months from the priority date; or 
 
•              (ii) six months from the time provided under Rule 69.1 for the start of the 
international preliminary examination; or 
 
•              (iii) six months from the date of receipt by the International Preliminary 
Examining Authority of the translation furnished under Rule 55.2. 
 
[141] Schedule 2A, Rule 70, heading  
 
     substitute 
 
Rule 70  
International Preliminary Report on Patentability by 
the International Preliminary Examining Authority 
(International Preliminary Examination Report) 
 
[142] Schedule 2A, Rule 70.15  
 
     substitute 
 
70.15   Form; Title  
 
     (a) The physical requirements as to the form of the report shall be prescribed by the 
Administrative Instructions.       (b) The report shall bear the title “international pr eliminary report on patentability (Chapter II of 
the Patent Cooperation Treaty)” together with an i ndication that it is the international preliminary 
examination report established by the Intern ational Preliminary Examining Authority. 
 
[143] Schedule 2A, Rule 70.16 
 
     omit 
 
 Each  IP/N/1/AUS/P/6 
Page 452  
 
     insert 
 
     (a) Each 
 
[144] Schedule 2A, Rule 70.16 
 
     omit 
 
 Amendments       insert 
 
 Replacement sheets containing amendments  
[145] Schedule 2A, Rule 70.16 
 
     insert 
 
     (b) Notwithstanding paragraph ( a), each superseded or reversed replacement sheet referred to in 
that paragraph shall also be annexed to the re port where the International Preliminary Examining 
Authority considers that the relevant superseding or reversing amendment goes beyond the disclosure 
in the international application as filed and th e report contains an indication referred to in 
Rule 70.2( c). In such a case, the superseded or rever sed replacement sheet shall be marked as 
provided by the Administrative Instructions.  
[146] Schedule 2A, Rule 72, heading 
 
     substitute 
 
Rule 72 
Translation of the International Preliminary Examination Report 
and of the Written Opinion of the International Searching Authority  
 
[147] Schedule 2A, after Rule 72.2 
 
     insert 
 
72.2bis  Translation of the Written Opinion of the International Searching Authority Established 
Under Rule 43 bis.1 
 
 In the case referred to in Rule 73.2(b)(ii), th e written opinion established by the International 
Searching Authority under Rule 43 bis.1 shall, upon request of the elected Office concerned, be 
translated into English by or under the responsibilit y of the International Bureau. The International 
Bureau shall transmit a copy of the translation to  the elected Office concerned within two months 
from the date of receipt of the request for translation,  and shall at the same time transmit a copy to the 
applicant.  IP/N/1/AUS/P/6 
Page 453 
 
 
[148] Schedule 2A, Rule 72.3 
 
     substitute 
 
72.3   Observations on the Translation  
 
 The applicant may make written observations as to the correctness of the translation of the 
international preliminary examination report or of  the written opinion established by the International 
Searching Authority under Rule 43 bis.1 and shall send a copy of the observations to each of the 
interested elected Offices and to the International Bureau. 
 
[149] Schedule 2A, Rule 73, heading  
 
     substitute 
 
Rule 73 
Communication of the International Preliminary Examination Report 
or the Written Opinion of the In ternational Searching Authority 
 
[150] Schedule 2A, Rule 73.2 
 
     substitute  
73.2   Communication to Elected Offices 
      (a) The International Bureau shall effect th e communication provided for in Article 36(3)( a) to 
each elected Office in accordance with Rule 93 bis.1 but not before the expiration of 30 months from 
the priority date.       (b) Where the applicant makes an express request to an elected  Office under Article 40(2), the 
International Bureau shall, upon the request  of that Office or of the applicant, 
 
•              (i) if the internationa l preliminary examination report has already been 
transmitted to the International Bureau under Rule 71.1, promptly effect the communication provided for in Article 36(3)( a) to that Office; 
 
•              (ii) if the international preliminary examination report has not been transmitted to 
the International Bureau under Rule 71.1, promptly communicate a copy of the written opinion established by the International Searching Authority 
under Rule 43 bis.1 to that Office. 
      (c) Where the applicant has withdrawn the demand or any or all elections, the communication 
provided for in paragraph ( a) shall nevertheless be effected, if the International Bureau has received 
the international preliminary examination report, to the elected Office or Offices affected by the 
withdrawal. 
 
[151] Schedule 2A, Rule 76.5, heading  
 
     substitute 
 
76.5   Application of Rules 22.1(g), 47.1, 49, 49 bis and 51 bis 
 IP/N/1/AUS/P/6 
Page 454  
 
[152] Schedule 2A, Rule 76.5  
 
     omit 
 
 49 and 
 
     insert 
 
 47.1, 49, 49 bis and 
 [153] Schedule 2A, subparagraph 76.5 (iv) 
 
     omit 
 
 report. 
 
     insert 
 
 report;  
[154] Schedule 2A, after subparagraph 76.5 (iv) 
 
     insert 
 
•              (v) the reference in Rule 47.1( a) to Rule 47.4 shall be construed as a reference to 
Rule 61.2( d). 
 
[155] Schedule 2A, Rule 76.6  
     omit 
 
[156] Schedule 2A, Rule 78.1, heading 
 
     substitute  
78.1   Time Limit  
 
[157] Schedule 2A, paragraph 78.1 (a) 
 
     omit 
 
 Where the election of any Contracting State is effected prior to the expiration of the 19th 
month from the priority date, the 
 
     insert 
 
 The  IP/N/1/AUS/P/6 
Page 455 
 
 
[158] Schedule 2A, paragraph 78.1 (a) 
 
     omit 
 
 other 
 
     insert 
 
 later  [159] Schedule 2A, paragraph 78.1 (b) 
 
     omit 
 
 shall, where the election of any Contracting State is effected prior to the expiration of the 19th 
month from the priority date, 
 
     insert 
 
 shall  [160] Schedule 2A, Rule 78.2 
 
     omit 
 
[161] Schedule 2A, Rule 80.5 
 
     substitute 
 
80.5   Expiration on a Non-Working Day or Official Holiday 
  If the expiration of any period during which any document or fee must reach a national Office 
or intergovernmental organization falls on a day: 
 
•              (i) on which such Office or organization is not open to the public for the 
purposes of the transaction of official business; 
 
•              (ii) on which ordinary mail is not delivered in the locality in which such Office 
or organization is situated; 
 
•              (iii) which, where such  Office or organization is situated in more  
than one 
locality, is an official holiday in at least one of the localities in which such 
Office or organization is situated,  and in circumstances where the national 
law applicable by that Office or organization provides, in respect of national applications, that, in such a case, such  period shall expire on a subsequent 
day; or 
 
•              (iv) which, where such Office is the government authority of a  
Contracting  State 
entrusted with the granting of patents, is  an official holiday in part of that 
Contracting State, and in circumstances where the national law applicable by that Office provides, in respect of nati onal applications, that, in such a case, 
such period shall expire on a subsequent day; 
 IP/N/1/AUS/P/6 
Page 456  
 
the period shall expire on the next subsequent da y on which none of the said four circumstances 
exists.  
[162] Schedule 2A, Rule 89 bis.3  
 
      substitute  
89bis.3   Communication Between Offices 
  Where the Treaty, these Regulations or the Administrative Instructions provide for the 
communication, notification or transmittal (“communication”) of an international application, 
notification, communication, correspondence or other document by one national Office or intergovernmental organization to another, such  communication may, where so agreed by both the 
sender and the receiver, be effected in electronic form or by electronic means.  [163] Schedule 2A, after paragraph 90.4 (c) 
 
     insert 
 
     (d) Subject to paragraph ( e), any receiving Office, any International Searching Authority, any 
International Preliminary Examining Authority and the International Bureau may waive the 
requirement under paragraph ( b) that a separate power of attorney be submitted to it, in which case 
paragraph ( c) shall not apply. 
      (e) Where the agent or the common representative submits any notice of withdrawal referred to 
in Rules 90 bis.1 to 90 bis.4, the requirement under paragraph ( b) for a separate power of attorney shall 
not be waived under paragraph ( d). 
 
[164] Schedule 2A, after paragraph 90.5 (b) 
 
     insert 
      (c) Any receiving Office, any Internati onal Searching Authority and any International 
Preliminary  
Examining  Authority may waive the requirement unde r paragraph (a)(ii) that a copy of 
the general power of attorney is attached to the request, the demand or the separate notice, as the case 
may be.  
     (d) Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to 
in Rules 90bis.1 to 90bis.4 to the receiving Office,  the International Searching Authority or the 
International Preliminary Examining Authority, a copy of the general power of attorney shall be  
submitted to that Office or Authority.  
 
[165] Schedule 2A, paragraph 90 bis.5 (a) 
 
     substitute 
 
     (a) Any notice of withdrawal referred to in Rules 90 bis.1 to 90 bis.4 shall, subject to 
paragraph ( b), be signed by the applicant or, if there are two or more applicants, by all of them. An 
applicant who is considered to be the common representative under Rule 90.2( b) shall, subject to 
paragraph ( b), not be entitled to sign such a notice on behalf of the other applicants. 
 
[166] Schedule 2A , subparagraph 90 bis.5 (b) (iii) IP/N/1/AUS/P/6 
Page 457 
 
 
 
     omit 
 
 with, or did not sign the later election c oncerned but the requirements of Rule 56.1 ( c) were 
complied 
 
[167] Schedule 2A, paragraph 92 bis.1 (b) 
 
     substitute 
      (b) The International Bureau shall not record the requested change if the request for recording is 
received by it after the expiration of 30 months from the priority date.  
[168] Schedule 2A, after Rule 93  
 
     insert 
 
Rule 93 bis  
Manner of Communication of Documents 
 
93bis.1   Communication on Request; Communication via Digital Library 
 
     (a) Where the Treaty, these Regulations or the Administrative Instructions provide for the 
communication, notification or transmittal (“communication”) of an international application, notification, communication, correspondence or ot her document (“document”) by the International 
Bureau to any designated or elected Office, such  communication shall be effected only upon request 
by the Office concerned and at the time specified by that Office. Such request may be made in relation 
to individually specified documents or a specified class or classes of documents.       (b) A communication under paragraph ( a) shall, where so agreed by the International Bureau and 
the designated or elected Office concerned, be c onsidered to be effected at the time when the 
International Bureau makes the document available to that Office in electronic form in a digital 
library, in accordance with the Ad ministrative Instructions, from which that Office is entitled to 
retrieve that document.  
[169] Schedule 2A, paragraph 94.1 (b) 
 
     omit 
 
 Article 38,  
     insert 
 
 Article 38 and Rule 44 ter.1, 
 IP/N/1/AUS/P/6 
Page 458  
 
[170] Schedule 2A, after paragraph 94.1 (b) 
 
     insert 
 
     (c) The International Bureau shall, if so request ed by an elected Office, furnish copies of the 
international preliminary exam ination report under paragraph ( b) on behalf of that Office. The 
International Bureau shall promptly publish details of any such request in the Gazette. 
 
[171] Schedule 2A, Schedule of Fees 
 
     substitute 
 
SCHEDULE OF FEES 
Fees  Amounts  
1.  International Filing Fee: 
  (Rule 15.2) 1,400 Swiss francs plus 15 Swiss francs for 
each sheet of the international application in 
excess of 30 sheets 
2.   Handling Fee: 200 Swiss francs 
  (Rule 57.2)  
Reductions  
3.   The international filing fee is reduced by the following amount if the inte rnational application is, 
in accordance with and to the ex tent provided for in the Admi nistrative Instructions, filed: 
(a) on paper together with a copy thereof in 
electronic form:  100 Swiss francs 
(b) in electronic form where the text of the 
description, claims and abstract is not in 
character coded format: 200 Swiss francs 
(c) in electronic form where the text of the 
description, claims and abstract is in character coded format: 300 Swiss francs 
4.   The international filing fee (where applicable , as reduced under item 3) and the handling fee are 
reduced by 75% if the international application is filed by: 
(a) an applicant who is a natura l person and who is a national of and resides in a State whose per 
capita national income is below US$3,000 ( according to the average per capita national 
income figures used by the United Nations fo r 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; 
provided that, if there are several applicants, each must satisfy the criteria set out in either 
sub-
item (a) or (b). 
 [172] Schedule 7, Part 2, item 204 
 
     omit 
 
 issued an international preliminary examination report 
 
     insert IP/N/1/AUS/P/6 
Page 459 
 
 
  established an international preliminary examin ation report under Article 35 of the PCT, other 
than a report under Rule 44 bis.1 of the PCT, 
 
[173] Schedule 7, Part 3, items 302 and 303  
 
     omit 
 
 $1 000       insert 
 
 $1 200  
[174] Schedule 7, Part 3, item 307 
 
     omit 
 
[175] Schedule 7, Part 3, item 308 
 
     omit 
 
 the amount of the basic fee  
     insert 
  50% of the international filing fee, not taking into account any fee for each sheet of the 
international application in excess of 30 sheets 
 
[176] Schedule 7, Part 3, item 308 
 
     renumber as item 307 
 IP/N/1/AUS/P/6 
Page 460  
 
[177] Schedule 7, Part 4, items 1 to 4 
 
     substitute 
 
Item Matter Fee 
401 International filing fee: 
(Rule 15.2 of the PCT) 1 400 Swiss francs plus 
15 Swiss francs for each sheet of the international application in excess of 30 sheets 
402 Handling fee: 
(Rule 57.2 of the PCT) 200 Swiss francs 
Reductions 
403 The international filing fee is reduced by 100 Swiss francs if the international application 
is, in accordance with and to the extent provi ded for in the Administrative Instructions 
under the PCT, filed on paper together with a copy in electronic form 
404 The international filing fee (where appl icable, as reduced under item 403) and the 
handling fee are reduced by 75% if the in ternational application is filed by: 
  (a) an applicant who is a natural person a nd who is a national of and resides in a State 
whose per capita national income is be low US$3 000 (according to the average per 
capita national income figures used by th e United Nations for determining its scale 
of assessments for the contributions payabl e 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 sa tisfy the criteria mentioned in paragraph (a) 
or (b). 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173, 263 and 317; 2003 Nos. 71 and 213. 
 
2. Notified in the Commonwealth of Australia Gazette  on 11 December 2003. IP/N/1/AUS/P/6 
Page 461 
 
 
 
 
Patents Amendment Regulations 2004 (No. 1)1 
 
Statutory Rules 2004 No. 232 
_______________________________________________________________________________________________________________________________ _ 
 
I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Patents 
Act 1990 . 
 Dated 19 February 2004   
 
 
P. M. JEFFERY 
Governor-General 
 By His Excellency’s Command 
 
   IAN MACFARLANE 
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 462  
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2004 (No.1).  
 
2 Commencement 
 
 These Regulations commence on 11 March 2004. 
 
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
 
  Schedule 1 Amendment 
  (regulation 3) 
   
[43] Schedule 4 
 
     after 
  Sao Tome and Principe, Democratic Republic of 
 
     insert 
 
 Saudi Arabia 
 
__________________________________________________________________________________ 
 
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264,  291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59,  100, 173, 263 and 317; 2003 Nos. 71, 213 and 316. 
 
2. Notified in the Commonwealth of Australia Gazette  on 26 February 2004. IP/N/1/AUS/P/6 
Page 463 
 
 
 
 
Patents Amendment Regulations 2004 (No. 2)1 
 
Statutory Rules 2004 No. 1932 
__________________________________________________________________________________  I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Patents 
Act 1990 . 
 Dated 24 June 2004   
 
 
P. M. JEFFERY 
Governor-General 
 By His Excellency’s Command 
 
   IAN MACFARLANE  
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 464  
 
Contents 
 
  1 Name of Regulations    2 Commencement 
 
  3 Amendment of Patents Regulations 1991  
   4 Transitional — amendments made by Schedule 2  Schedule 1  Amendments commencing on gazettal 
 
Schedule 2  Amendments commencing on 1 July 2004 
 
_______________ 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2004 (No. 2).  
 
2 Commencement 
 
 These Regulations commence as follows:   (a) on the date of notification in the Gazette  — regulations 1 to 3 and Schedule 1; 
 
 (b) on 1 July 2004 — regulation 4 and Schedule 2. 
 
3 Amendment of Patents Regulations 1991  
 
 Schedules 1 and 2 amend the Patents Regulations 1991 . 
 4 Transitional — amendments made by Schedule 2 
 
     (1) This regulation applies to a PCT appli cation that, before 1 July 2004 was not open to public 
inspection. 
 
     (2) If the PCT application was filed before 1 January 2004, regulations 8.3, 8.4 and 13.5 of the 
Patents Regulations 1991 , as in force immediately before 1 July 2004, continue to apply in 
relation to the application. 
      (3) If the PCT application was filed afte r 31 December 2003 and published under Article 21 of 
the PCT before 1 July 2004, it is taken, fo r paragraph 90 (b) of the Act as modified under 
regulation 8.3 of the Patents Regulations 1991 , to have been published on 1 July 2004. 
 
Schedule 1 Amendments commencing on gazettal 
  (regulation 3) 
   [1] Schedule 4 
 
     after 
 
 Algeria 
 IP/N/1/AUS/P/6 
Page 465 
 
 
     insert 
 
 Andorra  
[2] Schedule 4 
 
     after 
 
 Benin       insert 
 
 Bhutan  
[3] Schedule 4 
 
     after 
 
 Senegal  
     insert 
 
 Serbia and Montenegro  
[4] Schedule 4 
 
     omit 
 
 United Republic of Tanzania  
[5] Schedule 4 
 
     omit 
 
 Yugoslavia  
[6] Further amendments 
 
Provision omit insert 
Schedule 4 Cambodia, Kingdom of Cambodia 
Schedule 4 Macau Macau, China 
Schedule 4 Sao Tome and Principe, Democrat ic Republic of Sao Tome and Principe 
Schedule 4 Surinam Suriname 
 IP/N/1/AUS/P/6 
Page 466  
 
Schedule 2 Amendments commencing on 1 July 2004 
  (regulation 3) 
   
[1] After subregulation 8.3 (1B) 
 
     insert 
 
     (1C) Paragraph 90 (a):  
 omit 
 
  subsection 92 (1) or (2)  
 insert 
   subsection 92 (2) 
      (1D) Paragraph 90 (b):  
 substitute 
               (b) where subsection 92 (3) applies — on the day on which the application is 
published under Article 21 of the PCT. 
      (1E) Section 92:   substitute 
 
92 Notice of publication 
 
     (1) Subsection (2) applies to a PCT application:  
 
 (a) that has not lapsed, or been withdrawn or refused; and   (b) that is to be treated as an application for a standard patent under this Act; and  
 (c) for which the applicant complies with s ubsection 89 (3) before the end of 18 months 
after the priority date of the application. 
      (2) The Commissioner must publish a notice in the Official Journal stating that the PCT 
application is open to public inspection: 
 
 (a) if the applicant asks the Commissione r in writing to publish the notice; or 
  (b) in any case — as soon as practicable after th e end of 18 months after the priority date 
of the application. 
 
     (3) If: 
  (a) the applicant does not comply with subsection 89 (3) within 18 months after the 
priority date of a PCT application; and 
 
 (b) the application is publishe d under Article 21 of the PCT; IP/N/1/AUS/P/6 
Page 467 
 
 
  the application is open to public inspection.       (4) If a PCT application is open to public inspection, any other prescribed documents are also 
open to public inspection. 
 
     (5) In this section:  
 
 priority date , for an international application, has the same meaning as in the PCT. 
 [2] Subregulation 8.4 (1) 
 
     omit 
 
 under subsection 92 (1) 
 
     insert 
 
 for publication under section 92 of the Act  
[3] Regulation 13.5 
 
     omit   If  
     insert 
      (1) If  
[4] Regulation 13.5 
 
     insert 
 
(2) Subregulation (1) does not apply in relation to a PCT application that is treated as a patent 
application under the Act, if the PCT applica tion lapses under paragraph 142 (2) (f) of the Act. 
__________________________________________________________________________________  
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173, 263 and 317; 2003 Nos. 71, 213 and 316; 2004 
No. 23. 
 
2. Notified in the Commonwealth of Australia Gazette  on 1 July 2004. IP/N/1/AUS/P/6 
Page 468  
 
 
 
Patents Amendment Regulations 2004 (No. 3)1 
 
Statutory Rules 2004 No. 2502 
__________________________________________________________________________________ 
 I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with 
the advice of the Federal Executive Council,  make the following Regulations under the Patents 
Act 1990 . 
 Dated 19 August 2004   
 
  
P. M. JEFFERY 
Governor-General 
 
By His Excellency’s Command 
    
IAN MACFARLANE  
Minister for Industry, Tourism and Resources IP/N/1/AUS/P/6 
Page 469 
 
 
1 Name of Regulations 
 
 These Regulations are the Patents Amendment Regulations 2004 (No.3).  
 
2 Commencement 
 
 These Regulations commence on the date of their notification in the Gazette . 
 
3 Amendment of Patents Regulations 1991  
  Schedule 1 amends the Patents Regulations 1991 . 
   
Schedule 1 Amendments 
  (regulation 3) 
   
[1] After subregulation 5.9 
 
     insert 
 
5.9A  Amendment of statement: additional ground as a result of amendments of the Act by the 
US Free Trade Agreement Implementation Act 2004  
 
     (1) This regulation applies to a statement me ntioned in regulation 5.4, a copy of which is served 
on an applicant before the end of the period ending 3 months after the commencement of 
Schedule 8 to the US Free Trade Agreement Implementation Act 2004 . 
      (2) Subject to subregulation (3), the Co mmissioner on the written request of an opponent must 
amend a statement to add: 
  (a) a ground that the invention is not a patentable invention because it does not comply 
with paragraph 18 (1) (c) or (d) of the Act; and 
  (b) the particulars relating to the ground.       (3) The Commissioner must not amend a statement under subregulation (2) unless the opponent 
has: 
  (a) filed a written request to amend the statement by the earlier of:                (i) the end of the period ending 3 months after the commencement of Schedule 8 
to the US Free Trade Agreement Implementation Act 2004 ; and 
 
              (ii) the date on which a patent whose grant is being opposed, and to which the 
written request relates, is sealed under section 61 of the Act; and 
  (b) at the same time as the written request is filed: 
 
              (i) applied to the Commi ssioner in writing, under subregulation 5.10 (4), for 
permission to serve a copy of further evidence (if any) on which the opponent 
intends to rely in support of an a dditional ground mentioned in subparagraph 
(2) (a); or IP/N/1/AUS/P/6 
Page 470  
 
              (ii) given to the Commissioner a statement that the opponent does not intend to 
rely on any further evidence in relation to the additional ground. 
      (4) The Commissioner must give the applicant a copy of the statement as amended under 
subregulation (2). 
 
[2] Paragraph 5.10 (1) (b) 
 
     omit 
  (except in regulation 5.3 or 5.3AA, paragr aph 5.4 (a) or subparagraph 5.8 (1) (a) (i)) 
 
     insert 
 
 (except in regulation 5.3 or 5.3AA, paragr aph 5.4 (a), subparagraph 5.8 (1) (a) (i) or 
regulation 5.9A) 
 
[3] Subregulation 5.10 (2) 
 
     omit 
  (not being a step that is taken under regul ation 5.3 or 5.3AA, paragraph 5.4 (a) or 
subparagraph 5.8 (1) (a) (i)) 
 
     insert 
  (not being a step that is taken under re gulation 5.3 or 5.3AA, paragraph 5.4 (a), 
subparagraph 5.8 (1) (a) (i) or regulation 5.9A) 
 
[4] Paragraph 22.11 (4) (a) 
 
     substitute 
 
(a) an action or step prescribed in Chapter 5,  other than an action or step taken under 
regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or 
regulation 5.9A; 
__________________________________________________________________________________  
Notes 
 
1. These Regulations amend Statutory Rules 1991 No . 71, as amended by 1991 No. 456; 1992 No. 148; 1993 
Nos. 113, 227, 340 and 341; 1994 Nos. 182, 317 and 387 ; 1995 Nos. 16, 20, 82 and 427; 1996 No. 271; 1997 
Nos. 192 and 345; 1998 Nos. 45, 56, 141, 241, 257, 264, 291, 319, 342 and 345; 1999 Nos. 154, 184, 261 and 349; 
2000 No. 317; 2001 Nos. 98, 184 and 345; 2002 Nos. 59, 100, 173, 263 and 317; 2003 Nos. 71, 213 and 316; 2004 
Nos. 23 and 193. 
 
2. Notified in the Commonwealth of Australia Gazette  on 20 August 2004. 
 
__________