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AUSTRALIA
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This section provides quick answers to some of the most frequently asked questions about Australian patent prosecution. For more detail, click on the links below.
Australian Patent Office Web Site
General Prosecution
AUSTRALIA
Basic Rules
| First to file receives patent? |
Yes.
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| Language of application |
English.
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| Requirements for filing date |
Patent request in English (including name and address of applicants and an indication that a patent is being sought) and a specification comprising a description of the invention in any language.
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| Deadline to file translation |
The later of 3 months from a formalities notice or when the application becomes open to public inspection. Fees apply after 3 months from the notice.
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| Inventor/Applicant signature needed at time of filing? |
No.
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| Small entity status |
Not available.
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| Assignments |
Not required at filing. However, a Notice of Entitlement stating: (1) the applicants are the actual inventors, or have attained title to the invention from the inventor(s); (2) for a Convention or PCT application confirm that applicants are or have entitlement to the basic application from the applicants and (3) confirm that the basic application is the first application made in a Convention country in respect of the invention; must be filed prior to acceptance.
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| Deadline for filing a request for examination |
Earlier of five years from filing date or six months from Direction to Request Examination from the Australian Patent Office.
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| Maintenance fees |
Yes. Payable annually starting from fifth anniversary of filing date.
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| File wrapper estoppel |
Applicability of file wrapper estoppel is yet to be decided.
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| Reinstatement of abandoned applications |
Yes, with evidence of an error or omission occurring by the applicant and/or agent; circumstances beyond control; or if person took due care to ensure act to be done within the deadline.
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| Duty to disclose prior art |
No.
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| Is there a requirement to file first in Australia or obtain a foreign filing license where the invention is made in Australia? |
No.
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Statutory Bars
| On sale bar? |
Yes, if sale was authorized by the patentee and invention was secretly sold in Australia before the priority date of a claim (i.e. secret use precludes filing of a valid patent application). A public sale is not a bar if an application is filed within 12 months from the sale.
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| Grace period following public disclosure? |
Yes. Grace period is 12 months to file a complete Australian patent application after a first disclosure of the invention anywhere by or with consent of nominated person/patentee or predecessor in title for disclosures made on/after April 1, 2002.
Grace period is 12 months to file a provisional or complete Australian patent application after an unauthorized public disclosure.
Grace period is six months to file a provisional or complete Australian patent application after a public disclosure for reasonable trial of the invention or after a public disclosure at a recognized exhibition or Learned Society.
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| Rough estimate of time until receipt of first Office Action |
Two weeks to six weeks (convention applications). Two years to four years (national phase applications).
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| Expedited examination |
Yes, if supported with a reason.
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| Deadline to obtain acceptance after receipt of first Office Action |
Yes. Deadline is 21 months with payment of monthly late fees after 12 months.
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| Can prior art be filed by a third party against a pending patent application? |
Yes. Once the specification becomes open to public inspection and up to immediately before acceptance, a person may notify the Commissioner in writing to provide documentary evidence that the pending patent application is not novel or inventive. The person asserting that the application is not patentable must provide reasons in a filed notice.
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| Types of patents |
Provisional patents, complete patents, innovation patents, divisional applications and patents of addition.
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| Innovation Patent |
Lower inventive threshold (i.e. requires an innovative step rather than inventive step). Patent term eight years from filing. The Australian Patent Office performs a formalities check of the application and if all is in order, the patent is granted. However, a granted patent is not enforceable against a potential infringer. Substantive examination is performed if requested with payment of fee. The innovation patent is certified and enforceable if found to be patentable. Opposition at anytime by any party after patent is certified. Cannot file an innovation patent in relation to humans, plants, animals or biological processes for their generation. Can only convert an innovation patent to a standard patent before grant, which may be within a week from filing.
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PCT National Phase Applications
| Time limit for national phase entry |
31 months from the priority date.
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| Can national phase entry be made after this time limit? |
Yes, with evidence of an error or omission occurring by the applicant and/or agent; circumstances beyond control; or if person took due care to ensure act to be done within the deadline.
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| Translation requirement at national phase entry? |
The national phase application must be filed in English. If PCT application not in English, a verified English translation must be filed at national phase entry.
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| Are copies of the International Application, International Search Report or International Examination Report required? |
No, assuming that WIPO has had time to transmit these documents to the Australian Patent Office by the national entry date.
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Post-Allowance Issues
| Opposition of allowed application |
Yes, within three months from publication of acceptance (period is extendible).
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| Patent term |
20 years from filing date for standard patent; eight years for innovation patent.
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| Compulsory Licensing? |
Yes. Where reasonable requirements of the public have not been satisfied within three years from grant and patentee provides no satisfactory reason for failure to exploit invention. A compulsory license may be granted by a court if a patent lapses or ceases through failure of the patentee to perform a required act and a party uses the invention or has taken steps to exploit the invention during a period when the patent has lapsed or ceased and before an extension of time has been granted to complete an outstanding act.
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| Patent term extension? |
Yes. Available for pharmaceutical substances for up to 5 years. Extension of term request must be filed within 6 months from the later of the patent grant date and the pharmaceutical regulatory registration date.
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| Marking requirements? |
No, but marking may provide evidence that an alleged infringement was not “innocent infringement”.
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| Prior user rights? |
Yes. In Australia, if a person was making or using, or had taken definite steps to make or use claimed invention before the priority date of a claim, the person has the right to make or use the claimed invention without infringing the claim.
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| Reasonable compensation for third party activities prior to grant? |
Yes. If the claims of the published specification could be validly granted.
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| Reissue available? |
No.
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| Reexamination available? |
Yes. After acceptance of the patent, the patentee or any other person may request re-examination. Only documents may be lodged to assert that the claimed invention is not novel or lacks an inventive step.
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| Disclaimer of invalid claims available? |
Invalid claims do not invalidate patent. Post-grant amendment is allowable if the scope is not broadened.
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