Overview
There are two types of Australian patent: a Standard Patent or an Innovation Patent. The overwhelming majority of patent applications filed in Australia are applications for a standard patent.
The majority of patent applications filed in Australia by applicants based in other countries fall into one of the following categories:
- National Phase Entry from a PCT Application
- Paris Convention Application based on one or more Priority Applications
- Non-Convention application
A national phase entry of a PCT application may only enter the national phase as a standard patent application.
There is only one situation in which a form must be signed at the applicant’s end to file a patent application in Australia. That situation is where the application is a national phase application based on a PCT application in which the PCT specification is not in English – see Filing Note 1 below in relation to the Minimum Filing Requirements. In all other cases, we can prepare and execute all forms necessary to file the application.
Minimum Filing Requirements
| Information and Documents Required | National Phase of PCT Application | Paris Convention Application | Non-Convention Application |
|---|---|---|---|
| Applicant Name and Address | At Filing | At Filing | At Filing |
| Inventors Names | Later | Later | Later |
| PCT International Application Number | At Filing | N/A | N/A |
| Verified English Translation of PCT Specification (if required) | At Filing (1) | N/A | N/A |
| Specification (description, claims, drawings and abstract) | Later | At Filing (2) | At Filing |
| Notice of Entitlement | Later (3) | Later (3) | Later (3) |
| Priority Application Details (country / number / filing date) | Later | At Filing (4) | N/A |
Filing Notes
- N/A = Not Applicable to this type of application.
- The deadline for filing a national phase application in Australia based on a PCT application is 31-months from the earliest priority date.
- A Verified English translation of the PCT specification is required by the Patent Office if the PCT specification is not in English. The Verified English translation should include any amendments made to the PCT specification under Article 19, Article 34 or Rule 91 of the PCT provisions. A Verification of Translation form must be attached to the front of the Verified English Translation. The Verification of Translation must be executed by the actual translator or a person who is competent to attest to the accuracy of the translation of the documents into English.
- To download a Verification of Translation form for completion to attach to the English translation, click here. - An application can be filed in which the specification consists merely of a cross reference to another document (even if that document is not in English) which contains the full disclosure for the Australian specification. After filing the application with the Patent Office, the specification will have to be amended to incorporate the disclosure of the other document. If the other document is not in English, a Verified English translation will also have to be filed with the Patent Office. This filing mechanism may be useful in cases where the specification is not available, or there is no English translation of the specification available, at the time of filing the application in Australia.
- The Notice of Entitlement must be filed before acceptance (allowance) of the application. A Notice of Entitlement is not required for an innovation patent application. However, the Patent Request for the innovation patent must contain an assertion to entitlement.
- To download a Notice of Entitlement form for completion, click here - (explanatory memorandum for completing Notice of Entitlement). - After a non-Convention patent application has been filed, it is possible to amend the application to a Convention application by filing a new Patent Request with the Patent Office that sets out the Priority Application Details. The application must have been filed in Australia within 12 months of the Priority Application.
- A Certified Copy of the Priority Application must be filed before acceptance (allowance) for a standard patent application and before certification for an innovation patent.
- A Verified English Translation of a Priority Application, which is not in English, is required only if requested by the Patent Office during examination or other proceedings.
Examination
Two types of examination of a patent application are available in Australia – normal examination and modified examination. The applicant chooses the type of examination that will be conducted on the application by the Patent Office. However, modified examination can be requested only if specified conditions are met.
Normal or Modified Examination?
Modified examination provides expedited prosecution of an Australian patent application through to acceptance (allowance). Modified examination is based on a corresponding patent granted in a specified country. To request modified examination, the corresponding granted patent must be:
- in the English language
- granted in the United States of America, Canada, New Zealand or a country that is a signatory to the European Patent Convention.
If these conditions are met and modified examination is requested, a certified copy of the corresponding patent granted in one of the specified countries must be filed with the Patent Office. The specification of the Australian application must be amended to conform to the specification of the corresponding patent granted in the specified country. Minor variations from conformity with the specification of the corresponding granted patent are permitted, such as omission of claims and consequential amendments, and the correction of any obvious mistakes.
One advantage of requesting modified examination is the possibility of gaining patent protection for claims that might not otherwise be allowed if normal examination was requested. For example, the corresponding granted patent might include claims that, under Australian law, would have given rise to a lack of unity of invention objection under normal examination, whereas under modified examination, a lack of unity of invention objection cannot be maintained.
Request for Deferment of Examination
When the Patent Office issues an official direction for an applicant to request examination, the applicant must file a request for examination within 6 months of the date of the official direction. It is sometimes the case that an applicant would like to file a request for modified examination, but a corresponding granted patent in a specified country has not yet issued. Such a situation prevents the applicant from filing a valid request for modified examination.
In such a situation, if a corresponding patent in a specified country is expected to be granted in the near future, the applicant can file a request for deferment of examination instead of filing a request for modified examination. The request for deferment cites the particulars of the corresponding patent application whose grant is awaited. Once the request for deferment of examination has been filed, the deadline to file a request for examination is deferred for 9 months from the date of filing the request for deferment.
If the corresponding patent application has not proceeded to grant by the deferred deadline to file a request for examination, a request for normal application will need to be filed. However, if the applicant had a second corresponding patent application in another specified country which did proceed to grant by the deferred deadline, a request for modified examination could still be filed based on the second corresponding granted patent.
Acceptance (Allowance) of Application
An additional official fee for each claim after the first 20 claims is payable on acceptance. If the application contains a large number of claims at acceptance, the official fee payable can be quite high. To avoid, or at least minimise this fee, it is recommended that a review of the claims is undertaken during prosecution to determine if the total number of claims can be reduced. Various strategies can be adopted to reduce the total number of claims, including revising the claims to include multiple dependencies where appropriate.
A cost effective way to make amendments in the claims (and the specification, in general) is to wait for an examiner's report to issue from the Patent Office (after the request for examination has been filed). Amendments can be made in the course of responding to the examiner's report. There is no requirement in Australia for the response to be confined to matters raised in the examiner's report. There are two ways to ensure that an examiner's report is issued by the Patent Office:
- delay filing the Notice of Entitlement – the Patent Office will issue an examiner’s report requesting that a Notice of Entitlement is filed; or
- file a request for deferment of acceptance – the Patent Office will not accept the application until after the request for deferment has been withdrawn.