Overseas Patent Applicants
If you're an overseas attorney, an individual, or a member of a company or other organisation that has a PCT application and wishes to enter the Australian national phase, then the following information is intended to help answer your questions.
I'm 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
The deadline for national phase entry into Australia is 31 months from the earliest priority claim whether or not International Preliminary Examination has been requested (Chapter II Application).
Information identifying the PCT Application, i.e. at a bare minimum the PCT number but preferably the WIPO publication number and/or a copy of the front page of the WIPO pamphlet. No Power of Attorney is required for us to represent your client before the Australian Patent Office and there are not declarations that have to be signed by the inventor. In my capacity as Australian patent attorney, once you have authorised me, I can sign all necessary documentation on your client's behalf.
If the PCT application and the pamphlet is in a language other than English then a copy, certified by its translator as a true and complete translation, must be lodged with the Australian Patent Office by the national phase entry deadline.
If the priority document 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. In the event that the examiner requests a verified translation then at least five months are usually provided to supply it.
As mentioned above, there are No Power of Attorney, Inventors' Declaration, or any other forms that have to be executed by either the inventors or the applicant in Australia. This is the case for both national phase entry and direct filings.
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, see below regarding the Grace Period exception to this.
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, only by the filing of a standard or innovation Australian patent application or an international patent application designating Australia. This is a complex area so please make contact if you have any specific questions Email.
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 six months in which a request for examination must be lodged. Examination may also be requested earlier at any time.
It is possible to request a Modified Examination where a counterpart application has granted in New Zealand, Canada, the U.S.A. or any of the countries that are signatories to the European Patent Convention.
If Modified examination is requested then a certified copy of the counterpart granted patent must be lodged and the Australian application must be amended to conform to the granted foreign counterpart. The primary investigation that is then carried out by the Australian Patent Office is to determine if the Australian application has claims that match those of the counterpart patent.
Search results do not have to be lodged when modified examination has been requested.
Once granted a patent that has been through the modified examination process has exactly the same legal status as one that has proceeded through normal examination.
The duty to disclose was abolished in October 2007. There is no longer a duty on applicants to inform the Patent Office of any search reports, official or otherwise.
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.
The Notice of Entitlement must also attest that the applicant has the right to claim priority from the basic application or applications.
The Notice of Entitlement can be prepared and lodged by me once I 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 matter being claimed that was not in substance disclosed at the filing date of the application.
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.
Reexamination may be requested on a granted Australian patent.
Only novelty and inventive step issues are considered during reexamination. Prior art that was previously considered during examination can be included in a request for reexamination.
for further information please contact me
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.