3.3 Directions

Date Published

In this topic:

Relevant Legislation

The Act

Section 17

Directions to co-owners

Section 55

Documents open for public inspection

Section 56

Certain documents not to be published

Section 113

Persons claiming under assignment or agreement

The Regulations

Reg 4.3

Prescribed documents: public inspection

Reg 5.12

Practice and Procedure

Reg 5.22

Commissioner may give directions

Reg 22.23

Written submission and oral hearings

Reg 22.24

Practice and procedure other than for opposition proceedings

Overview

A number of provisions in the Patents Act and Regulations provide the Commissioner with the power to make directions in certain circumstances. These are summarised below.

The Commissioner may make directions for the conduct of opposition proceedings under regs 5.12 and 5.22 (see 3.3.1 Directions in Opposition Proceedings).  In hearings other than opposition proceedings, the practice and procedure is determined by the Commissioner in accordance with reg 22.24 and the parties directed accordingly (see 3.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A; and 3.2.8.1 Procedure - Requests for the Commissioner to Make a Determination of Entitlement).

Regulation 22.23 provides that the Commissioner may make directions regarding written submissions in hearings proceedings (see 3.2.7.2, 3.2.8.2).

Section 17 provides that the Commissioner may give directions to settle disputes between co-owners of a patent as to dealings with the patent, the grant of licences under it or the exercise of a right under section 16.  For more information see 3.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners).  

Under section 113 the Commissioner may direct that a patent application proceed in a different name or that a joint applicant be recorded.  See 3.3.2 Directions that an application proceed in different name(s) – Section 113.

Under reg 4.3(2)(b) the Commissioner may direct that a document is not open for public inspection; and under section 56 may order inspection of a document.  See 3.13 Documents not OPI – Orders for inspection or 3.6.5 Complying with a Notice or Summons; Reasonable Excuses.