Australia


Patents

International Agreements Patent Cooperation Treaty (PCT) (from 31 March 1980).
Paris Convention (from 10 October 1925).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Budapest Treaty (from 7 July 1987).
Patent Authority IP Australia
Types of Patents/Applications Available

  • Provisional Patent Application.
  • Standard Patent.
    • Convention.
    • Non-Convention.
    • National Phase PCT Application.
    • Divisional Patent.

  • Patent of Addition.
  • Innovation Patent.
PCT National Phase Entry Deadline: Thirty-one (31) months from the earliest claimed priority date.
Patentability Requirements
  • Absolute novelty: the invention has not been publicly disclosed in any form, anywhere in the world.
  • Involves an inventive step, i.e. would not have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed anywhere in the world before the priority date. However, for an Innovation Patent, the invention must have an innovative step, which is a lower requirement than an inventive step.
  • Useful, i.e. the invention has a specific, substantial and credible use which can be appreciated by a person skilled in the relevant art.
  • Non-Patentable Subject Matter

    • Human beings, and the biological processes for their generation.
    • An invention, the use of which would be contrary to law.
    • Food or medicine produced by mere admixture.
    • For the purposes of an Innovation Patent, plants and animals, and the biological processes for the generation of plants and animals. However, this exclusion does not apply if the invention is a microbiological process or a product of such a process.
    Filing Requirements

    • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
    • Inventor’s Name, Address and Nationality;
    • Specification in English, or a verified translation of the PCT publication if not in English;
    • Convention Priority details (if relevant); and
    • Government filing fee.
    Grace Period for Disclosure Twelve (12) months if the disclosure was information made publicly available by, with or without the consent of the nominated person or the patentee, or their predecessor in title (in particular, including the inventor), by publication or use of the invention before the filing date of a Complete Application.
    Patent Term

    • A Standard Patent is protected for twenty (20) years from the date of filing.
    • An Innovation Patent is protected for eight (8) years from the date of filing.
    Search and Examination Standard Patent Applications

    • Examination of a Standard Patent Application is compulsory.
    • Examination may be requested at any time but must be requested within five (5) years of the filing date, together with payment of the Government fee. IP Australia may issue a Direction to Request Examination at any time after which Examination must be requested within two (2) months or the Application will lapse.
    • After Examination has been requested, an Examination Report usually issues within about twelve (12) months. If an adverse Examination Report issues, the Applicant has twelve (12) months from the date of the first Examination Report to overcome all objections or the Application will lapse.

    Innovation Patent Applications

    • An Innovation Patent is not examined before it is granted, but it cannot be enforced until after examination has been carried out and the Patent is certified.
    • Certification (examination) of an Innovation Patent is optional and examination may be requested by the Applicant or a Third Party.
    • Certification may be requested at any time during the term of an Innovation Patent with payment of the Government fee.
    • After Examination has been requested, an Examination Report usually issues within about six (6) months. If an adverse Examination Report issues, the Applicant has six (6) months from the date of the first Examination Report to overcome all objections or the application will lapse.
    Third Party Observations and Oppositions Pre-acceptance – s27 observations.
    Post-acceptance and pre-grant – s59 opposition.
    Post-acceptance – s97 re-examination.
    Post-grant – revocation.
    Patent Term Extension Provisions Available for up to five (5) years.
    Restoration Provisions Available provided that the Applicant is successful in obtaining an extension of time under Section 223 to rectify the error or omission or circumstances beyond the control of the Applicant, Owner or Agent that resulted in the lapsing of the Application or Patent.
    Work Sharing Programs Global Patent Prosecution Highway (GPPH)

      Available with the:

      • Austrian Patent Office.
      • Canadian Intellectual Property Office.
      • Danish Patent and Trademark Office.
      • Hungarian Intellectual Property Office.
      • Icelandic Intellectual Property Office.
      • Intellectual Property Office of Singapore.
      • Israel Patent Office.
      • Japan Patent Office.
      • Korean Intellectual Property Office.
      • National Board of Patents and Registration of Finland.
      • Nordic Patent Institute.
      • Norwegian Industrial Property Office.
      • Portuguese Institute of Industrial Property.
      • Russian Federal Service for Intellectual Property.
      • Spanish Patent and Trademark Office.
      • Swedish Patent and Registration Office.
      • United Kingdom Intellectual Property Office.
      • United States Patent and Trademark Office.

    Renewals Standard Patents

    • Renewal fees fall due from the fourth (4th) anniversary of the filing date.
    • Renewal fees are then due each anniversary after that until the Patent ceases.
    • There is a six (6) month grace period to pay any outstanding maintenance fees.

    Innovation Patents

    • Renewal fees fall due on the second (2nd) anniversary of the filing date.
    • Renewal fees are then due each year up to the seventh (7th) anniversary of the filing date.
    • There is a six (6) month grace period to pay any outstanding renewal fees.
    General There is no need for a Power of Attorney or an Inventor’s Declaration to be lodged on filing of an Application.

    Trade Marks

    International Agreements Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
    Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on 28 September 1979).
    Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
    Trademark Law Treaty (TLT) (1994).
    Singapore Treaty on the Law of Trademarks (2006).
    Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on 12 November 2007).
    Trade Mark Authority IP Australia
    Types of Trade Marks Available

    • Standard.
    • Certification.
    • Collective.
    • Defensive.
    • Series.
    • Madrid Designation.
    Non-Traditional Trade Marks Available

    • Colour.
    • Scent.
    • Shape.
    • Sound.
    • Moving images.
    Paris Convention Deadline: Six (6) months from the earliest claimed priority date.
    Provisions for Filing of Multi-Class Applications Yes.
    Excess Goods/Services Fee No.
    Registrable Trade Marks

    • Must be capable of being represented graphically.
    • Must be capable of distinguishing the goods or services from those of others.
    Non-Registrable Trade Marks

    • Trade Marks containing or consisting of a national sign, a prescribed sign, or scandalous matter;
    • Trade Marks that cannot be represented graphically;
    • Trade Marks for which use thereof would be contrary to morality or law;
    • Trade Marks that are not inherently adapted to distinguish the goods or services and have not acquired distinctiveness through use;
    • Trade Marks that are the same as, or similar to, well-known Marks in Australia;
    • Functional shapes;
    • Deceptive or confusing Trade Marks; and
    • Trade Marks that are substantially identical with, or deceptively similar to, a prior Registered Trade Mark or Application.
    Filing Requirements

    • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
    • Specification of the goods and/or services in relevant Nice classes;
    • A clear representation of the Trade Mark;
    • If Convention Priority is claimed, the Number, Date, Country and details of the Basic Application; and
    • Government filing fee.
    Initial Trade Mark Term

    • A Trade Mark is protected for ten (10) years from the date of filing, and is renewable every ten (10) years thereafter.
    Search and Examination

    • Examination of a Trade Mark Application is automatic.
    • A Trade Mark Application is generally examined within three (3) to four (4) months of the date of filing, and an Adverse Examination Report or Notice of Acceptance will issue shortly thereafter.
    • If an adverse Examination Report issues, an Applicant has fifteen (15) months from the date of the Examination Report to achieve acceptance.
    • A Hearing may be requested to address an Official objection.
    • If a Notice of Acceptance issues, registration fees become payable.
    • A Trade Mark cannot be registered before six (6) months after the priority date.
    Amendment of Goods and Services

    • Narrowing and clarifying amendments are allowed to the goods and/or services.
    • Removed goods and/or services may be added to other or further Classes.
    • Goods and/or services removed from a Standard or Series Application may be pursued in a Divisional Application.
    • The goods and/or services cannot be extended after filing.
    • Only very minor amendments are allowed to the Trade Mark.
    Third Party Oppositions and Applications

    • Opposition to registration or amendment of a Trade Mark.
    • Application to remove a Trade Mark from the Register, or to end its protection because it has not been used.
    Restoration Provisions Available provided that the Applicant is successful in obtaining an extension of time to rectify the error or omission that resulted in the lapsing of the Application or Registration.
    Renewals

    • Renewal fees fall due from the tenth (10th) anniversary of the filing date.
    • Renewal fees are then due each tenth (10th) anniversary thereafter.
    • There is a six (6) month grace period to pay any outstanding renewal fees which incurs late fees.
    General There is no need for a Power of Attorney to support the filing of an Application.

    Designs

    International Agreements Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
    Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
    Locarno Agreement Establishing an International Classification for Industrial Designs (as amended on 28 September 1979).
    Design Authority IP Australia
    Types of Designs Available

    • Single Designs.
    • Plural Designs.
    Paris Convention Deadline: Six (6) months from the earliest claimed priority date.
    Registrability Requirements The Design must be new and distinctive.
    Non-Registrable Designs

    • Medals;
    • Designs which contain the word “ANZAC”;
    • Designs which are prohibited under the Crimes (Currency) Act 1981 (e.g. any Design that is capable of misleading a person into believing that the Design is current paper money or Australian prescribed security; this prohibition does not extend to coins);
    • A Design(s) which is, or might reasonably be taken to be, scandalous;
    • The Arms or a flag or seal of the Commonwealth or a State or Territory;
    • The Arms or emblems of:
          • A State or Territory;
          • A city or town in the Commonwealth;
          • A public authority of public institution in Australia;
          • The armorial bearings, flags, State emblems or other signs of another country;
          • A Design which is prohibited under the Olympic Insignia Protection Act 1987;
          • A Design for an integrated circuit; and
          • A Design which is subject to a prohibition order under s108 of the Designs Act 2003.

    Filing Requirements

    • Class(es) according to the Locarno Classification system;
    • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
    • Designer’s Name, Address and Nationality;
    • Statement of Entitlement of the Applicant; i.e. how the Applicant has derived the right to the Design from the Designer (Assignment, Employment or other Agreement);
    • Name of the article(s) in relation to which the Design is sought to be registered;
    • Representation(s) of the Design as applied to the article(s);
    • An indication of the number of Designs in the Application;
    • A request for Registration or Publication;
    • Optionally: A Statement of Newness and Distinctiveness;
    • Optionally: Any Convention Claim and the details (Date, Number and Country) of the Basic Application from which Convention Priority is claimed; and
    • Government filing fee
    Initial Design Term Five (5) years.
    Full Term (if all renewals are paid timeously) Ten (10) years.
    Registration

    • If Registration is not requested when the Application is filed, a request must be filed within six (6) months of the filing date of the Application to request Registration or Publication of the Design or the Application will lapse.
    • Within one (1) month of the filing date, the Application will be subject to a formalities check to ensure that the necessary information and representations are present and verify that the Application is in order for Registration.
    • If the Application passes the formalities check, within a matter of weeks the Design will be registered and advertised in the Australian Official Journal of Designs, and made available for searching in the Australian Designs Data Searching (ADDS) database.
    Publication

    • Publication is an alternative to seeking Design Registration. Publishing a Design does not give an Applicant any rights in respect of the Design, but may be used for strategic purposes in circumstances where the Design cannot be registered (e.g. where the Design has been publically disclosed by being exhibited, sold, or displayed on a website) and the Applicant seeks to prevent others from obtaining Certification for the same Design.
    • If publication is requested, the Application will be formally checked and the Design will be published in the Australian Official Journal of Designs and the ADDS database.
    Search and Examination

    • Examination is optional and is not automatic.
    • Examination (Certification) is only carried out upon request and upon payment of Government fees.
    • Any person may request Examination (the Applicant/Owner or a Third Party). Where a Third Party requests Examination, the Government fees must be paid by the Applicant/Owner or the Design ceases.
    • Examination may be requested (by an Applicant/Owner or a Third Party) where a Design has already been examined and certified. That is, a Design may be examined multiple times.
    • An Examination Report will issue approximately three (3) months after Examination has been requested. All objections identified in the Examination Report must be overcome within six (6) months of the first Examination Report date.
    • Owners may request expedition of Examination. All Third Party Examination requests are automatically expedited.
    Amendment

    • An Application can be amended to exclude one or more of the Designs filed in it.
    • Applicants can file separate Applications for Design(s) that have been excluded from an initial Application.
    • Amendments to any document that results in the definition of the Design changing are only allowable if they do not include matter not in substance disclosed in the original Application, representations or other documents (e.g. to amend the Statement of Newness and Distinctiveness to better identify particular features of the Design and/or to delete a request for Registration or Publication).
    • Amendments to documents filed by other persons are not allowable.
    • Amending a document such as the Basic Application, or a Declaration or Affidavit filed by the Owner, has the effect of voiding the authenticity of the document.
    Third Party Oppositions and Applications

    • Entitlement Proceedings: A Third Party may assert that they are an entitled person in relation to the Design (whether or not some or all of the Owners of record are entitled persons). The outcome of the proceedings is revocation of the Design, with a Declaration identifying the person(s) whom the Registrar is satisfied is the proper Owner. When a Declaration is made, the people identified in the Declaration may file a new Application for a Design, the priority date of which is the same as it had in the Application in which it was first disclosed.
    • Unjustified threats: If the Owner of a Registered Design threatens another person with infringement proceedings, or other similar proceedings, in respect of a Design that is not Certified, an aggrieved person may apply to the Court for a Declaration that the threats are unjustified; an injunction against the continuation of the threats; and the recovery of damages sustained by that person as a result of the threats.
    Restoration Provisions

    • Extension of time provisions are available where a Design Application lapses or a Design Registration ceases as a result of an error or omission by the Applicant/Owner, or their agent, or circumstances beyond the control of the person who is the Applicant/Owner. An extension of time may be requested for doing the relevant act, such as paying a renewal fee or responding to an Examination Report.
    • The time for doing a relevant act may be extended before or after that time has expired.
    • An Application for an extension of time of more than three (3) months will be advertised for Opposition purposes.
    Renewals

    • A Design Application may only be renewed once.
    • The renewal fee must be paid within five (5) years from the filing date of the Application.
    • The payment of the renewal fee results in the renewal of the Design for a further five (5) years.
    General

    • Design Registrations are not enforceable unless they are examined and certified.
    • While the Regulations do not require the copy of the Basic Application to be certified by the relevant Office, the document must be sufficient to establish the facts to support any priority claim. Consequently, a certified copy from the relevant Office is the desirable form of copy of the Basic Application.
    • A Basic Application that is not in English must be accompanied by a verified translation into English.
    • Partial Design protection is not available. However, IP Australia will recognise a Partial Design Convention Priority Claim provided that a Statement of Newness and Distinctiveness which outlines the non-claimed part(s) of the representation(s), is filed.
    • A copy of the Basic Application and a verified English translation (if relevant) is not required at filing but may be filed when Examination (Certification) is requested.