MichaelBuck IP

A Patent & Trade Mark Attorney Firm

Australian National Phase Information

Let me explain the procedure for entering the Australian national phase for an international patent application. It's very straightforward compared to the process in many other jurisdictions.

In particular, unlike the situation before the United States Patent and Trademark Office (USPTO), in Australia there is no need for a Power of Attorney or an inventor’s declaration to be lodged.

Nowadays, when an international patent application is filed under the Patent Cooperation Treaty (PCT) it will automatically designate all the countries, including Australia, and regional offices such as the EPO, that are a party to the PCT.

Under the Australian Patents Act, the filing of a PCT application is taken to be equivalent to the filing of an Australian patent application so long as certain acts are performed before the Australian Patent Office (IP Australia) within 31 months of the earliest priority date listed on the PCT application.

The most crucial acts that must be performed are that the Australian Patent Office must be notified of an Australian address for service and paid the prescribed national phase entry fee before the 31 months from the earliest priority date have passed.

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.

The translation must be accompanied by a "certificate", i.e. a simple statement, verifying the translation as a true and complete translation of the PCT specification.

The verification of translation must be signed by a person that attests to being fluent in both languages.

The verification of translation doesn’t have to be witnessed, or legalised in any way. Furthermore, the Australian Patent Office will accept a scanned or photocopied copy of the verification of translation. The original is not required.

In my experience, if the national phase is entered before the 31 month deadline, without the verified translation being lodged before the deadline, then IP Australia will issue a letter advising that the verified translation must be lodged within one month.

However, I believe that this practice is discretionary and I strongly recommend that the verified translation be lodged before the 31 month deadline for national phase entry has passed.

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.

The filing receipt will provide an official Australian patent application number and state that the application was lodged on the international filing date of the PCT application. The application number will reflect the date that the international application was lodged, rather than the date that the Australian national phase was entered. For example, if the application was lodged in 2009, and national phase entry was effected into Australia in 2011, then the official application number will start with a “2009...” not with a “2011...”.

The steps involved in the subsequent examination, acceptance and grant of a standard Australian patent application emanating from an Australian national phase entry are the same as for all standard Australian patent applications.  A flowchart for the whole procedure with typical costs can be downloaded here.