Australia in a patenting context
Despite its small population, Australia is a major player in many industries including mining and resources, energy, agriculture and food, medical devices, pharmaceuticals, telecommunications and software, with many Australian companies recognised as world leaders. Australia contains a highly educated and skilled research base, and many multinational corporations undertake a significant amount of their research and development in Australia.
Australia ranks highly in any international patent comparisons, including the cost effectiveness of patent enforcement. Further, Australia ranks number nine for PCT National Phase Entries, and interestingly around 90% of all applications are from non – residents.
All of these factors point to Australia being a country where one should, as part of an international filing strategy, consider patent protection. As a result, the following has been prepared for the information of non-Australian entities that may be considering filing a patent application in Australia via PCT National Phase Entry. Earlier in 2013, a number of procedural changes were introduced in the Australian Patents Act, and these changes are reflected below.
In Australia, the deadline for National Phase Entry is 31 months from the earliest priority date. If the PCT application is in a language other than English, then a verified copy of the translation must be lodged at the time of filing. Where the applicant has already undertaken English translation for other jurisdictions – for example, USA at 30 months – the Australian requirement is readily met.
Further, no Power of Attorney is required, and there are no declarations that need to be signed by the inventors. The verification of translation document can be filed after National Phase Entry, so the application process is very simple.
The cost of entering National Phase in Australia, including official fees, is around AUD1000.
Request for examination
Examination for patents in Australia is not automatic, and 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. However, it is more common for IP Australia to issue a Direction to Request Examination. This direction normally issues around 12 – 18 months after National Phase Entry, and the applicant has a two month period from the direction in which to request examination. Examination may also be requested earlier if the applicant so requires.
The cost of requesting examination, including official fees, is around AUD700.
After the examination request is filed, an Examiner’s Report will be issued, and this might include certain objections. Traditionally such a report is issued around 12 months after filing the request, although it is anticipated that longer periods may occur. Within 12 months of this report, the applicant must overcome any objections and have the application in order for acceptance by IP Australia. Although it is difficult to predict, the cost of arguing and overcoming objections (except in complex cases) is likely to be in the AUD500 – 2000 range.
Notice of entitlement
This notice is basically a statement explaining how rights to the invention being sought have passed to the applicant. This notice can be prepared after the application is filed, but it must be lodged prior to or at the time of requesting examination.
Acceptance and sealing
Once the application is accepted, an Acceptance Fee is payable. Payment of this fee, including service charges, is around AUD450. However, if the specification has more than 20 claims, a fee of AUD110 per claim in excess of 20 is payable.
Australia has a pre – grant opposition approach, and there exists a three month period from publication of acceptance during which it is possible for a third party to oppose grant of the patent. This initial notice to oppose starts the patent opposition process – a process which can be quite lengthy.
Annual fees are payable from the fourth year anniversary from the international filing date. The renewal fee for the fourth anniversary is AUD300 and rises incrementally to AUD1120 for the final renewal – resulting in total renewal fees of AUD9900.
The foregoing is intended to provide a brief overview of the procedure for obtaining a patent in Australia. Clearly there may be specific strategies to consider depending on the individual situation, e.g.: deferring acceptance, expediting examination, filing divisionals etc.
Our law firm Demmeneyer & Associates has established an office in Melbourne, Australia. This office can attend to filings in both Australia and New Zealand, and can provide advice to clients contemplating seeking patent protection “down under”. You are welcome to contact Dennemeyer & Associates in Australia at +61 3 9888 6062 or firstname.lastname@example.org if you need advice or clarification on any of these aspects.