Using post-filing evidence and/or data to improve patent outcomes in Australia 

Ring Binder Used Stored Documents

Post-filing evidence or data can be a very useful tool during prosecution. In Australia, Examiners are generally very responsive to post-filing evidence and data. In this regard, post-filing evidence or data can be utilised to address support, sufficiency, and inventive step objections raised during the prosecution of an Australian patent application.  Support  Section 40(3) of […]

A case of not comparing Apple(s) with oranges…

Top View Smartphone With Keyboard Charger

A recent decision (Apple Inc. [2023] ADO 2) is a timely reminder for attorneys and applicants of the importance of ensuring that the differences are especially mentioned in the Statement of Newness and Distinctiveness for an Australian registered design. The design at the center of this case was Australian Design 202115002 and, during examination, a […]

Priority Entitlement in Australia: CRISPR Patent Update for Overseas Associates

3d Dna Medical Background

The Australian Federal Court, in ToolGen Incorporated v Fisher (No 2) [2023] FCA 794, discussed priority claim as one of the major factors contributing to the patent applicant’s unsuccessful appeal. The Court found that the claims both lacked entitlement to the earliest priority date and lacked novelty and inventiveness. This decision reminds us of the […]

Patent decision reaches boiling point as claim is found invalid

A recent decision (Calix Limited v Grenof Pty Ltd [2023] FCA 378) from the Federal Court of Australia has reminded both IP attorneys and patent applicants of the importance of ensuring that a patent specification supports the claimed invention. Background and claims Calix is the Applicant for Australian patent No 2014339743 (the Patent) directed towards […]

Enforcing your patent sooner: Considerations on the way to the Patent Prosecution Highway

If you are seeking patent protection and need to get your patent examined through a specific intellectual property office quickly, one possible option available is the Global Patent Prosecution Highway (GPPH), an initiative to which Australia is a participating intellectual property office.   What is the GPPH?  The GPPH is an agreement between member patent […]

Patent Oppositions in Australia: Adhering to the procedure

A patent opposition can be a complex and time critical issue, whether you are commencing the opposition, or your patent application is being opposed. It’s crucial to fully understand the process by which an opposition occurs in the relevant jurisdiction. In Australian patent oppositions, the procedure, timeline and timeframe of each step must be strictly […]

Pharmaceutical Extensions of Time: One Affirmed; One Overturned

The Full Federal Court of Australia provided further certainty over the specifics of the Pharmaceutical Patent Term Extension (PTE) regime in Australia in Commissioner of Patents v Ono Pharmaceutical Co. Ltd [2022] FCAFC 39 (Ono) and Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2022] FCAFC 40 (MSD case). Brief Background Both cases involved […]

Patents: Timing and Costs associated with Amendments in New Zealand

Continuing on with my article in relation to timing and costs associated with amendments in Australia, this article delves into differences in New Zealand. Despite the relatively close proximity of the two countries, the timing and costs in New Zealand and Australia are quite different. Pre-prosecution An amendment to the claims and/or specification prior to […]

Patents: Timing and Costs associated with Amendments in Australia

Under Australian practice, amendments can be submitted at any time throughout the life of a patent. However, there are some restrictions as to the type of amendments and there are also costs associated with amendments at different times. Pre-prosecution An amendment to the claims and/or specification prior to requesting examination will be deemed a voluntary […]

The timing for filing a patent application

As patent attorneys, we meet inventors who are at different stages in the development of their invention. As a result, we get some inventors who contact us ‘a bit too early’ and some inventors who contact us ‘a bit too late’. Regardless, the important part is that you patent your idea as early as possible […]