Australia - from filing to grant
Our patent attorneys are registered to practice before the Australian and New Zealand Patent Offices, and they routinely practice on all aspects of patent prosecution before these offices.
Australian National phase entry
Australian national phase applications must be filed by 31 months from the earliest claimed priority date. For national phase entry, generally all that is required from you is the PCT application number or International (WO) publication number and, if the specification is not in English, a verified English translation. View filing requirements in Australia.
Australian Convention applications
Australia is a Convention country, meaning that an Australian application can be validly filed within 12 months from filing a priority application filed according to the Paris Convention for Protection of Industrial Property. Generally all we require from you is a copy of the specification of the priority application and if the specification is not in English, a verified English translation. View filing requirements in Australia.
Late filing and extensions of time
An extension of time can be obtained for entering the national phase or filing a convention application in Australia if the ordinary deadline to do so was missed as the result of:
- an error or omission by the applicant or their attorney; or
- circumstances beyond the control of the applicant.
To obtain an extension it is necessary to provide evidence that the applicant had an intention to file the application prior to the deadline and an explanation of what caused the deadline to be missed. This evidence is usually in the form of a declaration by a person who has first hand knowledge of the error or omission.
The granting of such an extension is at the discretion of the Patent Office. To maximise the chance of the extension being granted it is necessary to lodge the application accompanied by the extension request without delay as soon as the failure to file the application in time has been detected. Evidence can be prepared and filed a short time later.
Examination and acceptance of an Australian patent application
An Australian application for a standard patent is not examined automatically. In order to have the application examined, a request for examination must first be filed. A request for examination must be filed within 2 months of receiving a direction from the Patent Office to file a request. At present, the Patent Office will issue such a direction about three years after the earliest application was filed.
At the time of requesting examination the following information is required:
- Details of how the applicant derives its rights to the invention from the inventor, for example by employment or assignment.
- Name of the applicant in the priority application (if convention priority is claimed). If the priority applicant is not the same as the applicant in Australia, details of how the applicant is entitled to claim priority from the priority application.
If there are lawful grounds of objection (eg the invention is not novel) a report will be issued giving the applicant a prescribed period to have the application accepted. For applications where a request for examination was filed before 15 April 2013 the applicant is given 21 months to achieve acceptance in Australia. For applications where a request is filed after 15 April 2013 the applicant is given 12 months to achieve acceptance. If the application is not accepted by this time, it will lapse. One alternative is to file a divisional application (see below) if acceptance cannot be achieved by the due date.
Once the examiner is satisfied that there are no outstanding issues, the application is accepted, and if there is no pre-grant opposition, or if following opposition there is found to be patentable subject matter in the application, the Australian Patent Office will seal or grant the patent. A Patent Deed is issued and sent to the patent applicant or their attorneys.
Australian divisional applications may currently be filed for subject matter disclosed but not claimed in a parent application, provided that the divisional application is filed within 3 months from advertisement of acceptance of the parent application. This type of application may be filed in response to a lack of unity objection (mirroring US divisional practice), where acceptance cannot be obtained within a given time period (mirroring US continuation practice) or where subject matter is to be added to the specification of the divisional application (mirroring US CIP practice).
Australia is a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. If the applicant intends to rely on a micro-organism deposit under this Treaty for the purposes of written description, and for the purpose of claiming the benefit of a priority date of a priority document disclosing an invention involving the relevant micro-organism, the deposit must be made on or before the filing date of the priority document. This is a new requirement for applications for which examination is sought after 15 April 2013. (For applications for which examination was sought before 15 April 2013, the timing requirement is that the deposit be made on or before the filing date of the complete application, which may be the Convention or International application). If this is not done it is not possible to rectify the patent in respect of a claim covering the micro-organism per se, or the use of it where the skilled worker could not, before the filing date, reasonably have been expected to obtain the deposit, nor is it possible to obtain the benefit of the relevant priority document.
It is also a requirement in Australia that the specification include details of the deposit including the accession number of the deposit, and the name of the depository institution, and a description of the characteristics of the micro-organism. This requirement must be satisfied before publication of the specification (i.e. publication generally occurs at 18 months from earliest claimed priority date). A full morphological description and details of the deposit should also be included in the specification. It may be possible to amend the specification to include the details of micro-organism deposit if these have not been included in the specification by the time of publication, although this is only possible where the Australian Patent Office has exercised its discretion to extend the relevant due date to incorporate the deposit details. We can advise you further on what is required to amend the specification in order to comply with this requirement.
It is also a requirement that a copy of the deposit receipt is filed in the Australian Patent Office before the application can be accepted. If the receipt is not in English, an English translation of the receipt along with a verification certificate from the translator. If the depositor is not the same as the applicant, details of how the depositor is entitled to the deposit.
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