Global Assist | Patents

Overview

There are two types of Australian patent: a Standard Patent or an Innovation Patent. The overwhelming majority of patent applications filed in Australia are applications for a standard patent.

The majority of patent applications filed in Australia by applicants based in other countries fall into one of the following categories:

  • National Phase Entry from a PCT Application
  • Paris Convention Application based on one or more Priority Applications
  • Non-Convention application

A national phase entry of a PCT application may only enter the national phase as a standard patent application.

There is only one situation in which a form must be signed at the applicant’s end to file a patent application in Australia. That situation is where the application is a national phase application based on a PCT application in which the PCT specification is not in English – see Filing Note 1 below in relation to the Minimum Filing Requirements. In all other cases, we can prepare and execute all forms necessary to file the application.

Minimum Filing Requirements

Information and Documents RequiredNational Phase of PCT ApplicationParis Convention ApplicationNon-Convention Application
Applicant Name and AddressAt FilingAt FilingAt Filing
Inventors NamesLaterAt FilingAt Filing
PCT International Application NumberAt FilingN/AN/A
Verified English Translation of PCT Specification (if required)At Filing (1)N/AN/A
Specification (description, claims, drawings and abstract)LaterAt Filing (2)At Filing
Notice of EntitlementLater (3)Later (3)Later (3)
Priority Application Details (country / number / filing date)LaterAt Filing (4)N/A

Filing Notes

  • N/A = Not Applicable to this type of application.
  • The deadline for filing a national phase application in Australia based on a PCT application is 31-months from the earliest priority date.
  1. A Verified English translation of the PCT specification is required by the Patent Office if the PCT specification is not in English. The Verified English translation should include any amendments made to the PCT specification under Article 19, Article 34 or Rule 91 of the PCT provisions. A Verification of Translation form must be attached to the front of the Verified English Translation. The Verification of Translation must be executed by the actual translator or a person who is competent to attest to the accuracy of the translation of the documents into English.
    – To download a Verification of Translation form for completion to attach to the English translation, click here.
  2. An application can be filed in which the specification consists merely of a cross reference to another document (even if that document is not in English) which contains the full disclosure for the Australian specification. After filing the application with the Patent Office, the specification will have to be amended to incorporate the disclosure of the other document. If the other document is not in English, a Verified English translation will also have to be filed with the Patent Office. This filing mechanism may be useful in cases where the specification is not available, or there is no English translation of the specification available, at the time of filing the application in Australia.
  3. The Entitlement of the Applicant to grant of a standard patent is stated when filing a Request for Examination. Entitlement to grant of an innovation patent is stated in the Patent Request for the innovation patent.
  4. After a non-Convention patent application has been filed, it is possible to amend the application to a Convention application by filing a new Patent Request with the Patent Office that sets out the Priority Application Details. The application must have been filed in Australia within 12 months of the Priority Application.
  5. A Certified Copy of the Priority Application is not required unless requested by IP Australia.
  6. A Verified English Translation of a Priority Application, which is not in English, is required only if requested by the Patent Office during examination or other proceedings.

Examination of Standard Patent Application

A Request for Examination of a standard patent application must be filed within five years of the application filing date or earlier if directed by IP Australia.

When the Patent Office issues an official direction for an applicant to request examination, the applicant must file a request for examination within two months of the date of the official direction.

When the Patent Office issues an official direction for an applicant to request examination, the applicant must file a request for examination within two months of the date of the official direction.

Acceptance (Allowance) of Standard Patent Application

An additional official fee for each claim after the first 20 claims is payable on acceptance. If the application contains a large number of claims at acceptance, the official fee payable can be quite high. To avoid, or at least minimise this fee, it is recommended that a review of the claims is undertaken during prosecution to determine if the total number of claims can be reduced. Various strategies can be adopted to reduce the total number of claims, including revising the claims to include multiple dependencies where appropriate.

A cost effective way to make amendments in the claims (and the specification, in general) is to wait for an examiner’s report to issue from the Patent Office (after the request for examination has been filed). Amendments can be made in the course of responding to the examiner’s report. There is no requirement in Australia for the response to be confined to matters raised in the examiner’s report. To ensure that an examiner’s report is issued by the Patent Office, the recommended practice is to file a request for postponement of acceptance when filing the Request for Examination. IP Australia will not accept the application until after the request for postponement of acceptance has been withdrawn.

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