PCT Article 19 Amendments – International Patent Applications

So you’ve just received an international search report on your PCT application and the searching authority has stated that all the claims are lacking in novelty. Well, all’s not lost, there are opportunities for making amendments to an international patent application. It’s possible to make an amendment, to the claims only, under Article 19 of the Patent Cooperation Treaty prior to the publication of the international patent application. It’s also possible to lodge amendments to the claims, description and drawings with a Demand for International Preliminary Examination. In either case your amendments must be supported by material in the international patent application as originally filed.

Is Late National Phase Entry into Australia Possible?

Unlike say Canada and China, there are no particular provisions for late national phase entry into Australia. However, the general extension of time provision (under Section 223 of the Australian Patents Act), is applicable in some circumstances. (This post is about late national phase entry but the situation is pretty much the same for the late filing of a Convention application into Australia.)

Extensions of time of twelve months (or even longer) have been granted in the past for late national phase entry into Australia . So it is possible but it depends on the reasons why the applicant missed the initial 31 month deadline and, when they subsequently realised that they had missed it, what steps they then took.

Changing Applicant Details for PCT Applications Before National Phase Entry

I’ve recently had to request the recordal of the change of applicant details on a PCT application. It was a straightforward situation. I had a signed Deed of Assignment from the current applicant company to the new applicant company. The only complication was that the national phase entry deadline was less than a month away.

The first option was to submit a letter to IP Australia, which is the receiving office for this international patent application, requesting that they ask WIPO to record the change. Because I wanted to be sure that the details of the new applicant were recorded on the WIPO database (Patentscope) before national phase entry I was concerned that lodging the request through IP Australia might add to the time taken for WIPO to receive and process the request. The second option was to file directly with WIPO. It is possible to do that and that’s what I ended up doing.

Prior Art Searching to Gauge Patentability

You can only get a valid patent if your invention is truly “novel”, i.e. new. Apart from being novel the invention must also be inventive, for a standard patent or at least innovative, for an innovation patent.

Without getting too far off track I’ll just point out that at present ACIP (i.e. the Advisory Council for Intellectual Property) is investigating whether or not the innovation patent system is working properly. Depending on the outcome of their investigations It could be that the innovation patent system will be either abolished or altered so that the test for “innovative” step is changed to the same test for “inventive step” that applies to standard patents.

Removal of Trademarks for Non-Use

Although there are a few exceptions, the US Patent and Trademark Office (USPTO) generally required that a trade mark applicant provides evidence that the mark has actually been used in the USA before the certificate of registration can actually issue. Another country that has a similar requirement is Canada. In addition to providing evidence of use before registration, some countries also require that evidence of use be provided at some stage after registration, usually before the registration can be renewed.

Greetings from LA

About a month ago I had just got home and was in the kitchen talking to Megan when my mobile phone rang. It was an inventor (I’ll call him “Jack”) calling from Los Angeles in California. Jack wanted to extend his US patent application coverage to Australia.

He said, “Hi Michael, I’ve got a patent application filed with the USPTO and I want to lodge in Australia. What’s the deal for doing that?”.
It was a great surprise to hear his US accent coming over the line. Usually when I do work for clients in the USA, or other countries, it comes in as an email from their attorney. Not as a direct phone call from the applicant / inventor. My mobile phone number is on the contact page of my website so people can do exactly what Jack had done and simply give me a call.

Power of Attorney Requirements – Chile

These days many countries either don’t require a Power of Attorney for a patent filing or if they do then a ed, or scanned and emailed, copy of the power signed by the applicant will do.
In case you’re wondering, a Power of Attorney is a legal requirement of the country in question. It’s to formally empower the local patent attorney to represent the applicant before the particular country’s Patent Office.

Office Move

It’s been an exciting time for us. When I say “us” I mean my dear wife and helper here Megan and me and also Nel, who’s recently joined us and is giving us a hand on the admin side of things. Exciting because we’ve just moved into a new office. We were at 196 Moggill Road for almost four years and the little office we had there was pretty much bursting at the seams. It had been a jeweler’s shop in a previous life and was a bit of an unlikely spot to open a patent attorney office though it worked out surprisingly well for us.

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