Patents |
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Australia |
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| (Asia Pacific) Firm Clayton Utz Updated 22 Mar 2021 | |
| Which patent-related international treaty is your country is a member of? | Australia belongs to the following patent-related international treaties:
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| What kinds of protection is available for inventions? | Inventions protections available in Australia include:
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| What kinds of subject matter (as such) are excluded from patent protection? | The following subject matter is excluded from patent protection in Australia:
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| What are the documents and information required for filing a national patent application? | Documents and information required for filing a national patent application in Australia include:
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| Is it possible to request early publication or a deferment of publication? | Yes, it is possible to request early publication or deferment of publication in Australia. Request for early publication available by completing and submitting the relevant forms, however, it is not possible to request deferment of publication. |
| Does the applicant have a provisional right upon the publication of an application? | Yes, the applicant has a provisional right upon publication of an application in Australia. Once your standard patent is granted, your patent rights can be enforced from the publication date of your complete application provided that the granted claims are within the scope of the published claims. |
| When is it possible to file a voluntary amendment to specification? | It is possible to file voluntary amendments in Australia at the following times:
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| Is it required to file a request for substantive examination? | Yes, it is required to file a request for substantive examination in Australia. Five years from the date of application or you can be directed to request an examination by the Commissioner of Patents and if directed, you have two months to file from the date of the direction |
| Is there a third-party opposition procedure upon publication or after grant? | Yes, there is a third-party opposition procedure upon publication or after grant in Australia. |
| What is the time period from application to grant for a straightforward application (no office actions or oppositions)? | The time period from application to grant in Australia is between 3-4 years. |
| Is there any process for accelerated examination of application? | Yes, there is a process for accelerated examination of an application in Australia. Reasons need to be provided when submitting the request for accelerated examination setting out why it is required, for example, the applicant is aware infringement is taking place or there is a significant commercial imperative. However, Australia is part of the Global Patent Prosecution Highway ("GPPH") program. Any requests for examination to proceed under the GPPH are automatically dealt with in an accelerated manner. |
| To maintain the validity of patent, is it required to pay an annuity in your country? | Yes, it is required to pay an annuity to maintain the validity of a patent in Australia. |
| Is late payment of annuity permissible? | Yes, late payment of an annuity is permissible in Australia. This must be paid within six months of the due date. If the fee is not paid within this grace period, an additional late fee is charged for every month (or part month) that the fee is late. |
| What are the available enforcement methods in your country? | Available enforcement methods in Australia include:
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| Are there any peculiarities in the system of protection for a patent in your country, of which it is important for clients to be aware? | Any applicant for patent protection in Australia must disclose the best method of performing the invention known to it at the time of filing a complete application. Failing to disclose the best method can invalidate an entire patent. |
Patents
Australia belongs to the following patent-related international treaties:
- Paris Convention
- Patent Cooperation Treaty ("PCT")
- TRIPS
- Strasbourg Agreement on the International Patent Classification ("IPC") system
- Patent Law Treaty ("PLT")
- Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
Inventions protections available in Australia include:
- Inventions
- Others: In addition to standard patents, innovation patents (similar to utility models) are currently available but they are being phased out
The following subject matter is excluded from patent protection in Australia:
- Others: Human beings, and the biological processes for their generation, artistic creations, mathematical models, plans, schemes or other purely mental processes.
Documents and information required for filing a national patent application in Australia include:
- Name and address of the applicant(s)
- Name and address of the inventor(s)
- Specification (description, claims and drawings)
Yes, it is possible to request early publication or deferment of publication in Australia. Request for early publication available by completing and submitting the relevant forms, however, it is not possible to request deferment of publication.
Yes, the applicant has a provisional right upon publication of an application in Australia. Once your standard patent is granted, your patent rights can be enforced from the publication date of your complete application provided that the granted claims are within the scope of the published claims.
It is possible to file voluntary amendments in Australia at the following times:
- At any time during prosecution
Yes, it is required to file a request for substantive examination in Australia. Five years from the date of application or you can be directed to request an examination by the Commissioner of Patents and if directed, you have two months to file from the date of the direction
Yes, there is a third-party opposition procedure upon publication or after grant in Australia.
The time period from application to grant in Australia is between 3-4 years.
Yes, there is a process for accelerated examination of an application in Australia. Reasons need to be provided when submitting the request for accelerated examination setting out why it is required, for example, the applicant is aware infringement is taking place or there is a significant commercial imperative. However, Australia is part of the Global Patent Prosecution Highway ("GPPH") program. Any requests for examination to proceed under the GPPH are automatically dealt with in an accelerated manner.
Yes, it is required to pay an annuity to maintain the validity of a patent in Australia.
Yes, late payment of an annuity is permissible in Australia. This must be paid within six months of the due date. If the fee is not paid within this grace period, an additional late fee is charged for every month (or part month) that the fee is late.
Available enforcement methods in Australia include:
- Civil enforcement
Any applicant for patent protection in Australia must disclose the best method of performing the invention known to it at the time of filing a complete application. Failing to disclose the best method can invalidate an entire patent.