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.
PCT NATIONAL PHASE ENTRY DEADLINE AND OVERVIEW
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).
There is no requirement for a Power of Attorney or an Inventor’s Declaration.
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 our experience as a firm, 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, we believe that this practice is discretionary and 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…”.
MINIMUM FILING REQUIREMENTS FOR ENGLISH LANGUAGE PCT APPLICATIONS
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. 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 our capacity as Australian patent attorneys, once you have authorised, we 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. In our experience IP Australia will issue a request that a certified copy be lodged within one month of national phase entry, if it wasn’t lodged by the 31 month deadline. However, we believe that such a practice is discretionary and so late filing of the verified translation should not be relied upon.
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.
POWER OF ATTORNEY NOT REQUIRED
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 under the PCT. This is a complex area so please contact us if you have any questions.
REQUEST FOR EXAMINATION
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.
NOTICE OF ENTITLEMENT
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.
AMENDMENTS PRIOR TO ACCEPTANCE
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 PARTY NOTICES
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.
THIRD PARTY OPPOSITION TO GRANT
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 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.