If you’re an overseas attorney, an individual, or a member of a company or other organisation that has an international patent application under the Patent Cooperation Treaty (PCT) then the following information is for you.
We are also registered in New Zealand and have an address for service there in case you wish to enter the New Zealand national phase as well.
There is no requirement for a Power of Attorney or an Inventor’s Declaration.
At a bare minimum we require information identifying the application, i.e. the PCT number or the WIPO publication and preferably a copy of the front page of the WIPO pamphlet.
In Australia the National Phase Entry fee is a flat fee irrespective of the number of claims in the international application, whether or not there are multiple claim dependencies or the length of the patent specification.
If the PCT application is in a language other than English (a non-English application)then an English language translation of the international patent specification should also be lodged with IP Australia before the 31 month deadline. The English language translation should include any amendments that were made during the international phase under Article 16 of the PCT or article 34 of the PCT.
There is no longer any requirement for a certificate of verification of the translation. However, it is important that the translation is a true and complete translation of the PCT application as originally filed, including any amendments made under Article 34 and/or Article 19. If any further amendment is required then such an amendment must be made separately and should not be included in the translation of the PCT application that is lodged.
After IP Australia has been provided with the Australian address for service, national phase entry fee payment and the verified translation if the PCT application was not in English, it will issue a filing receipt.
If the PCT application and the pamphlet are in a language other than English then an English translation must be lodged with the Australian Patent Office by the national phase entry deadline. There are no provisions in the Australian Patents Act or Regulations for extending the deadline for lodging an English translation past the 31-month deadline.
If the priority application was in a language other than English then a certified English language translation of the priority document may be requested by the Examiner during examination. This will occur if, during examination, a validity-related issue arises in which the determination of the correct priority date becomes important.
Australia is a first-to-file, absolute novelty country so that publication of the invention or public use anywhere in the world before the priority date is invalidating. However, there is a Grace Period as discussed below.
Australia has a twelve month grace period. According to the Grace Period provisions non-confidential disclosure, made by the inventors or their successors in title is not invalidating so long as a complete Australian patent application is filed within twelve months. The filing of a PCT application designating Australia is sufficient to trigger the Grace Period. No declarations as to when the first disclosure was made have to be lodged.
There is a limitation to the Grace Period in that if a third party takes steps to exploit the invention prior to the filing of the Australian patent application then that third party will be immune from infringement once the application has proceeded to grant. Consequently the Grace Period should only be relied upon if absolutely necessary.
The grace period is not triggered by the filing of a provisional application, or other earlier application from which priority is claimed. It is only triggered by the filing of a standard Australian patent application or an international patent application under the PCT. This is a complex area so please contact us if you have any questions.
Examination must be requested within five years of the application date. For national phase entries of PCT applications the application date is taken to be the international filing date. Depending on the Patent Office’s workload, a Direction to Request Examination normally issues within 6-18 months of national phase entry. Once a Direction issues there is a period of two months in which a request for examination must be lodged. Examination may also be requested earlier at any time.
Prior to allowance of the patent application a statement must be lodged with the Patent Office explaining how rights to the invention have transferred from the inventor to the applicant.
Where the Request for Examination is lodged online the Notice of Entitlement information must be lodged simultaneous with the Request for Examination.
The Notice of Entitlement must also attest that the applicant has the right to claim priority from the basic application or applications.
We can attend to the Notice of Entitlement requirement once we have details of the mechanism by which rights have transferred, for example information concerning an employer-employee relationship or an assignment.
Voluntary amendments may be lodged after the national phase has been entered, either before or after an examiner’s report issuing. The amendments must not result in the inclusion of any matter that was not in substance disclosed at the filing date of the application.
AMENDMENTS AFTER ACCEPTANCE
Voluntary amendments can also be lodged after acceptance of a patent application has been advertised however any amendments to the claims must be such that they fall within the scope of the claims that were accepted.
Third parties may lodge Notices under s27 or s28 of the Patents Act alleging that a published patent application, or innovation patent undergoing certification examination, does not meet novelty and inventive step / innovative step requirements and identifying relevant prior art.
Once a standard patent application has been advertised in the Official Journal as accepted a period of three months is provided in which third parties can lodge a Notice of Opposition. Subsequent to lodging the Notice a Statement of Grounds and Particulars must be lodged setting out the reasons why the patent should not proceed to grant.
Oppositions to certified innovation patents may be lodged at any time.
For further information please contact us. This webpage is meant to provide general background information only about Australian patent practice. If you have a specific problem then please email your query.