Patent filing in Australia is governed by the Patents Act, 1990. A patent is granted for a device, substance, method or process. For an application to be successful, the invention must be new, useful and inventive or innovative.
The two types of patents granted in Australia are:
The invention claimed in a standard patent must be:
- involve an inventive step
- able to be made or used in an industry.
It gives long-term protection up to 20 years from the filing date of your application (or up to 25 years for pharmaceutical substances).
The invention claimed in an innovation patent must:
- involve an innovative step
The innovation patent requires an innovative step rather than an inventive step. An innovative step exists when the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention. The innovation patent protects an incremental advance on existing technology rather than being a groundbreaking invention. An innovation patent is considered usually for invention with a short market life that might be superseded by newer innovations.
It lasts up to 8 years from the filing date of your application.
Who can apply for a patent in Australia?
The application for patent can be made by any of the following persons
- the inventor(s)
- the person who has legally obtained rights to the invention from the inventor(s) or an intermediary
- a company, organisation or other employer of someone who made the invention in the course of their normal duties
What is Patentable in Australia?
A device, substance, method or process, which is new, useful and inventive or innovative, is patentable. Patent protection can be applied to a wide range of inventions including traditional inventions (such as appliances and mechanical devices) as well as computer-related inventions, biological inventions, micro-organisms and other biological materials.
However, patent cannot be obtained for
- human beings or the biological process for their generation
- artistic creation
- mathematical models
- plans, schemes or other purely mental processes
- invention having military aspects
|Relevant Office||Australian Government, IP Australia|
|Law in Force||Patents Act, 1990 and Patents Regulations 1991|
|PCT Contracting State||YES|
|Document(s) required for filing patent application||Name and address of applicant(s) and inventor(s) Priority Details, if applicable Provisional/Complete Specification in English An address for legal service in Australia or New Zealand|
|Prosecution Process||Examination must be requested within 5 years of the application’s filing date, or two months from the direction to request examination. Examination may be expedited under Patent Prosecution Highway (PPH). First examination report is then issued. Response must be filed within 12 months from the date of the examination report. Application will proceed to acceptance and then registration. After the application is accepted, there is a 3 months opposition period during which interested parties can oppose the application. If no opposition is filed, then the application proceeds to grant.|
|Registration Term||The maximum term of a standard patent is 20 years. 5 year extension of term may be granted for pharmaceutical patents.|
Types of Patent Applications in Australia
a) Provisional Application
Provisional application is filed to get the earliest possible priority date. However, filing a provisional application on its own does not give patent protection. A complete application is required to be filed within 12 months to pursue patent protection.
Provisional specification should include a title and description with as much detail as possible. It may or may not include claims.
b) Complete Application
Applications for standard or innovation patents are called complete applications. A complete application is necessary to actually have a patent granted. A complete specification should include Title, description, Claims, an Abstract and drawings (optional).
c) Convention Application
The Convention application is an application which claims priority from a foreign application filed in other country and the same is required to be made within 12 months from the date of such foreign application.
d) National Phase Application
The national phase application is an application which is based on PCT International application and the same is required to be filed within 31 months from the earliest priority date.
e) Divisional Application
A divisional application is filed to divide a patent application (parent application) into two or more applications. It keeps the priority rights from parent application. Divisional applications may be filed for subject matter disclosed but not claimed in a parent application or if examination report states that the application claims more than one invention. A divisional patent application can be filed any time until the grant of its parent application, however, no later than 3 months from advertisement of acceptance of the parent application.
f) Patent of Addition
Patent of addition is applied for an improvement or a modification to the standard patent application (the parent) that has not already been described in the parent application. A patent of addition cannot be an innovation patent and cannot have an innovation patent as a parent application. A patent of addition will not be accepted or granted if the parent has ceased. However, if the parent is ceased, the applicant has the option to convert patent of addition into a normal standard patent application. A patent of addition cannot be granted until the parent patent has been granted and the renewal fees are only required to be paid for the parent application. Once the parent patent ceases, so does the patent of addition.
The official language of the Australian patent application is English. In case the PCT application is filed in another language, the certified English translation must be provided within the term of 31 months from the date of priority.
Patent Examination & Prosecution
The Australian patent application is not automatically examined. For standard patent application, the applicant must request for examination and pay the examination fee within 5 years from the application filing date or within 2 months from receiving a Direction from the Commissioner of IP Australia, whichever is earlier. The application will lapse if the request for examination is not made within the required period.
The innovation patent is granted without substantive examination. However, if competitors request examination of the innovation patent, the applicant has to pay half of the examination fee, failure to which the patent will cease.
After examination, either a notice that the standard patent application has been accepted or an adverse report (examination report) is sent to the applicant. If adverse, the applicant will be given the opportunity to address any issue identified in the report and work towards application acceptance. Subsequent reports may be issued until all objections have been overcome. Once all objections are overcome, the application will be accepted. However, if the objections are overcome within 12 months from the date of first examination report, the application will lapse.
Patent Grant & Renewal
Patent confers the right to prevent third parties from making, using or selling the invention without the consent of its owner. The two types of patents granted in Australia are the standard patent and the innovation patent. A standard patent lasts for up to 20 years. An innovation patent only lasts for up to eight years. Pharmaceutical patents can last up to 25 years (5 years extension included).
An annuity fee must be paid each year to maintain a patent application and any subsequently granted patent in force. For a standard patent application or standard patent, the first annuity fee is due 4 years from the filing date. For an innovation patent application or innovation patent, the first annuity fee is due 2 years from the filing date.
Patent Opposition in Australia
Any person may oppose the grant of the standard patent by filing a notice of opposition, within 3 months of the date on which the patent application was advertised as accepted, on one or more of the following grounds:
- non-entitlement or entitled to a grant of a patent for the invention but only in conjunction with some other person;
- the invention is not a patentable invention
- complete specification does not disclose best method known to the applicant of performing the invention, or that the claims are not clear and succinct and supported by the matter disclosed in the specification.
After filing the statement of grounds and particulars, the opposition process goes through several stages of filing evidence. The time limit for filing evidence in each stage is 3 months. Thereafter, a hearing, orally or by written submissions as determined by the Commissioner, is scheduled and the decision is made after careful consideration of both the submissions and the evidence received. In case, the opposition is successful, the applicant may be given an opportunity to amend the specification to overcome the problems identified in the Commissioner’s decision.
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