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Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012]

Schedule 3 Reducing delays in resolution of patent and trade mark applications

Part 1 Amendments

Patents Act 1990

1  Subsection 26(2)

After “112”, insert “or 112A”.

2  Subsection 61(1)

After “100A”, insert “and paragraph 210A(2)(a)”.

3  Section 79B

Repeal the section, substitute:

79B   Divisional applications prior to grant of patent

             (1)  If:

                     (a)  a complete application (the first application ) for a patent is made; and

                     (b)  the first application is not a divisional application for an innovation patent provided for in section 79C;

the applicant may make a further complete application for a patent for an invention disclosed in the specification filed in relation to the first application.

             (2)  The further complete application:

                     (a)  must be made in accordance with the regulations made for the purposes of this subsection; and

                     (b)  must include the prescribed particulars.

             (3)  The further complete application can only be made during the period:

                     (a)  starting on the day the first application is made; and

                     (b)  ending when any of the following happens:

                              (i)  the first application lapses;

                             (ii)  the first application is refused;

                            (iii)  the first application is withdrawn;

                            (iv)  a period prescribed by the regulations for the purposes of this subparagraph ends.

             (4)  In this section:

 applicant has the same meaning as in section 38.

4  Subsection 79C(1)

Omit “, in accordance with the regulations, ”.

5  After subsection 79C(1)

Insert:

          (1A)  The further complete application:

                     (a)  must be made in accordance with the regulations made for the purposes of this subsection; and

                     (b)  must include the prescribed particulars.

6  After subsection 105(1)

Insert:

Order for amendment during an appeal

          (1A)  If an appeal is made to the Federal Court against a decision or direction of the Commissioner in relation to a patent application, the Federal Court may, on the application of the applicant for the patent, by order direct the amendment of the patent request or the complete specification in the manner specified in the order.

Note:       The following heading to subsection 105(1) is inserted “ Order for amendment during relevant proceedings ”.

7  Subsection 105(2)

After “order”, insert “under subsection (1) or (1A)”.

Note:       The following heading to subsection 105(2) is inserted “ Orders for amendment generally ”.

8  Subsection 105(3)

Omit “patentee”, substitute “applicant for an order under subsection (1) or (1A)”.

9  Subsection 105(5)

Omit “patentee”, substitute “applicant”.

10  After section 112

Insert:

112A   Decisions on appeal

                   A complete specification relating to a patent application must not be amended, except under section 105, if:

                     (a)  an appeal against a decision or direction of the Commissioner has been made to the Federal Court in relation to the specification; and

                     (b)  the appeal, and any proceedings resulting from it, have not been finally determined, withdrawn or otherwise disposed of.

11  Subsection 141(1)

Repeal the subsection, substitute:

             (1)  A patent application, other than a PCT application, may be withdrawn if all of the following conditions are met:

                     (a)  the applicant lodges a written notice of withdrawal signed by the applicant;

                     (b)  if the application has been opposed under section 59—the Commissioner has consented to the withdrawal;

                     (c)  if the regulations prescribe a period within which an application must not be withdrawn—the withdrawal will not occur within the prescribed period.

12  Sections 179 to 181

Repeal the sections.

13  Section 210

Before “The”, insert “(1)”.

14  At the end of section 210

Add:

Exercise of power to summon witnesses

             (2)  The Commissioner must not summon a witness under paragraph (1)(a) unless:

                     (a)  the Commissioner is satisfied, on the balance of probabilities, of the following matters:

                              (i)  the witness has a substantial interest in the proceedings before the Commissioner;

                             (ii)  the witness is likely to provide oral evidence of substantial relevance to a matter before the Commissioner;

                            (iii)  receiving oral evidence from the witness is necessary or desirable in all the circumstances; and

                     (b)  the Commissioner notifies the witness of the actions the Commissioner may take under section 210A if the witness fails or refuses to comply with the summons.

             (3)  The Commissioner may summon a witness under paragraph (1)(a) whether the witness is in or out of the patent area.

Exercise of power to require production of document or article

             (4)  The Commissioner must not require a person to produce a document or article under paragraph (1)(c) unless:

                     (a)  the Commissioner is satisfied, on the balance of probabilities, of the following matters:

                              (i)  the person has a substantial interest in the proceedings before the Commissioner;

                             (ii)  the document or article is likely to be of substantial relevance to a matter before the Commissioner; and

                     (b)  the Commissioner notifies the person of the actions the Commissioner may take under section 210A if the person fails or refuses to comply with the requirement.

             (5)  The Commissioner may require a person to produce a document or article under paragraph (1)(c) whether the person is in or out of the patent area.

Exercise of powers in relation to bodies corporate

             (6)  The Commissioner’s powers in subsection (1) to make a requirement of a person extend, if the person is a body corporate, to making that requirement of any person who is an officer, agent or employee of the body corporate.

Note:       The following heading to subsection 210(1) is inserted “ Commissioner’s powers ”.

15  After section 210

Insert:

210A   Sanctions for non-compliance with Commissioner’s requirements

             (1)  The Commissioner may take one or more of the actions listed in subsection (2) in relation to a person if:

                     (a)  the Commissioner summons the person to appear as a witness under paragraph 210(1)(a) or requires the person to produce a document or article under paragraph 210(1)(c); and

                     (b)  the person refuses or fails to comply with the summons or requirement; and

                     (c)  the Commissioner is satisfied, on the balance of probabilities, that it is appropriate in the circumstances to take the action.

             (2)  The actions the Commissioner may take are:

                     (a)  if the person is an applicant for a patent—a refusal to grant the patent (see subsection 61(1); and

                     (b)  the drawing of an inference unfavourable to the person’s interest in proceedings before the Commissioner; and

                     (c)  actions of a kind that are prescribed by the regulations.

             (3)  In deciding whether it is appropriate to take the action, the Commissioner must consider the following:

                     (a)  whether the person has a reasonable excuse for refusing or failing to comply with the summons or requirement;

                     (b)  whether the person has been offered payment of reasonable expenses associated with complying with the summons or requirement;

                     (c)  any other matter the Commissioner considers to be relevant.

16  Subsection 224(1)

Before “142(2)(b)”, insert “141(1)(b) or”.

Trade Marks Act 1995

17  Paragraph 11(1)(a)

Omit “section 37”, substitute “sections 37 and 54A”.

18  Subsections 52(2) and (3)

Repeal the subsections, substitute:

             (2)  The notice of opposition must be filed:

                     (a)  in the manner and form prescribed by the regulations; and

                     (b)  within the prescribed period, or within that period as extended in accordance with the regulations or in accordance with subsection (5).

             (3)  Regulations made for the purposes of paragraph (2)(a) or (b) may make different provision with respect to different components (if any) of the notice of opposition.

          (3A)  Subsection (3) does not limit subsection 33(3A) of the Acts Interpretation Act 1901 .

Note:       The heading to section 37 is altered by adding at the end “ if not accepted in time ”.

19  After section 52

Insert:

52A   Notice of intention to defend opposition to registration

             (1)  If a notice of opposition is filed in accordance with section 52, the applicant may file a notice of intention to defend the application for registration of a trade mark.

Note:          Failure to file a notice of intention will result in the application lapsing: see section 54A.

             (2)  The notice must be filed in the prescribed manner and within the prescribed period, or within that period as extended by the Registrar in accordance with the regulations.

20  At the end of section 54

Add:

             (3)  Without limiting subsection (2), the regulations may prescribe the circumstances in which the Registrar may dismiss the opposition.

21  After section 54

Insert:

54A   Lapsing of opposed application if no notice to defend the application filed

             (1)  Subject to subsection (2), an application lapses if:

                     (a)  a notice of opposition to the registration of the trade mark is filed (see subsection 52(1)); and

                     (b)  the applicant does not file an intention to defend the application for registration of the trade mark in the prescribed manner or within the prescribed period, or that period as extended (see section 52A).

             (2)  If, after the prescribed period has expired, the Registrar extends the period within which the notice to defend the application may be filed (see section 52A), the application:

                     (a)  is taken not to have lapsed when the prescribed period expired; and

                     (b)  lapses if the notice to defend the application is not filed within the extended period.

22  Subsection 55(1)

Omit “Unless the proceedings are discontinued or dismissed”, substitute “Unless subsection (3) applies to the proceedings”.

23  At the end of section 55

Add:

             (3)  This subsection applies to the proceedings if:

                     (a)  the proceedings are discontinued; or

                     (b)  the proceedings are dismissed; or

                     (c)  the application lapses because of the operation of section 54A (about lapsing of applications if a notice to defend the application is not filed).

24  Section 66

Before “The”, insert “(1)”.

25  At the end of section 66

Add:

             (2)  Subsection (1) does not apply to a notice of opposition filed by an opponent in relation to:

                     (a)  an opposition to the registration of a trade mark under section 52; or

                     (b)  an opposition to an application under section 92.

Note:          Regulations made for the purposes of subsection 231(3) may make provision in relation to amendment of documents filed in relation to an opposition.

26  Subparagraph 68(1)(b)(iii)

After “section 222”, insert “or the regulations (if any) made for the purposes of subsection 54(2)”.

27  At the end of subsection 68(1)

Add:

Note:          Applications may also lapse if an application for registration is opposed and a notice to defend the application is not filed: see section 54A.

28  Section 96

Repeal the section, substitute:

96   Notice of opposition

Applications to Registrar

             (1)  Any person may oppose an application under subsection 92(1) by filing a notice of opposition with the Registrar.

             (2)  The notice of opposition under subsection (1) must be filed:

                     (a)  in the manner and form prescribed by the regulations; and

                     (b)  within the prescribed period.

             (3)  Regulations made for the purposes of paragraph (2)(a) or (b) may make different provision with respect to different components (if any) of the notice of opposition.

             (4)  Subsection (3) does not limit subsection 33(3A) of the Acts Interpretation Act 1901 .

Applications to prescribed court

             (5)  Any person may oppose an application under subsection 92(3) by filing a notice of opposition with the court.

             (6)  A notice of opposition under subsection (5):

                     (a)  must be in a form approved by the court; and

                     (b)  must be filed in accordance with the rules of court.

29  Subsection 97(1)

Repeal the subsection, substitute:

             (1)  If:

                     (a)  there is no opposition to an application to the Registrar under subsection 92(1); or

                     (b)  an opposition to an application under that subsection has been dismissed (see section 99A);

the Registrar must remove the trade mark from the Register in respect of the goods and/or services specified in the application.

Note:       The heading to section 97 is altered by adding at the end “ etc. ”.

30  After section 99

Insert:

99A   Dismissal of opposition filed with Registrar

             (1)  The Registrar may, in prescribed circumstances, dismiss an opposition filed with the Registrar in accordance with subsection 96(1).

             (2)  An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar to dismiss an opposition under subsection (1).

31  At the end of section 231

Add:

             (3)  Without limiting subsection (1), the regulations may prescribe matters relating to oppositions under sections 52 and 92, including the following:

                     (a)  rules about filing and serving documents in relation to an opposition;

                     (b)  rules about the amendment of documents filed in relation to an opposition;

                     (c)  the circumstances in which the Registrar may dismiss an opposition;

                     (d)  provision for review by the Administrative Appeals Tribunal of decisions of the Registrar made under the regulations.



 

Part 2 Application and transitional provisions

32  Application of amendments

(1)       The amendments made by items 1 and 10 of this Schedule apply in relation to:

                     (a)  requests for amendments made on or after the day this Schedule commences; and

                     (b)  requests for amendments made before that day, if the Commissioner had not dealt with the request on or before that day.

(2)       The amendments made by items 2, 13, 14 and 15 of this Schedule apply in relation to powers exercised by the Commissioner under section 210 of the Patents Act 1990 (as amended by this Schedule) on or after the day this Schedule commences.

(3)       The amendment made by item 3 of this Schedule applies in relation to divisional applications provided for in section 79B of the Patents Act 1990 made on or after the day this Schedule commences.

(4)       The amendments made by items 4 and 5 of this Schedule apply in relation to divisional applications provided for in section 79C of the Patents Act 1990 made on or after the day this Schedule commences.

(5)       The amendments made by items 6, 7, 8 and 9 of this Schedule apply in relation to appeals to the Federal Court:

                     (a)  made on or after the day this Schedule commences; and

                     (b)  made before that day, if the appeal had not been finally determined, withdrawn or otherwise disposed of.

(6)       The amendments made by items 11 and 16 of this Schedule apply in relation to notices of withdrawal filed on or after the day this Schedule commences in respect of patent applications made before, on or after that day.

(7)       The amendments made by items 17 to 31 of this Schedule apply in relation to opposition proceedings commenced by notices of opposition filed on or after the day this Schedule commences.

33  Transitional provision—regulations

Despite the amendment made by item 11 of this Schedule, regulations in force for the purposes of section 141 of the Patents Act 1990 immediately before the commencement of this Schedule continue in effect, after that commencement, as if they had been made for the purposes of that section, as in force after that commencement.