1. Outline of Australian Intellectual Property Law
IP Australia (Australian Intellectual Property Office) http://www.ipaustralia.gov.au/
IP Australia belongs to the Ministry of Industry of the Australian federal government, and it is responsible for patent, industrial design, trademark, and plant breeder’s rights.
Industrial property-related treaties etc. in which Australia has joined:
- The Paris Convention for the Protection of Industrial Property
- The Berne Convention for the Protection of Literary and Artistic Works
- The Patent Cooperation Treaty (PCT)
- The Convention Establishing the World Intellectual Property Organization (WIPO Convention)
- The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (Budapest Treaty)
- The Agreement Establishing the World Trade Organization (WTO)
- The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Hague Convention)
- The International Convention for the Protection of New Varieties of Plants (UPOV Convention)
- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement)
- The Trademark Law Treaty
- The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)
Of all Australian patent applications in 2012, PCT applications which entered the Australian national phase accounted for not less than 70%. According to classification of the number of annual patent applications in Australia by countries, the number of patent applications from the US was largest (11,378), followed by Australia (2,627), and Japan (1,746) (survey by IP Australia).
(Statistics in 2012 by IP Australia)
1. Types of Patent
Australian patent is classified into the following three.
- 1. Standard Patent
Standard patent is suitable for protection of an invention concerning a further complicated and advanced technology.
- 2. Innovation Patent
Innovation patent is granted without examination. It is therefore possible to protect an invention with a short market life quickly, easily, and at a relatively low cost. In addition, the criterion of whether or not an innovation patent has inventive step is set lower than that of whether or not a standard patent has inventive step. Note that innovation patent must be “certified” through a substantive examination before you can enforce the right of the innovation patent, though the innovation patent is granted without examination.
- 3. Patent of Addition
Patent of addition is a patent for an “improvement or modification” of an invention (“parent invention”) of a “parent patent” of the patent of addition. In a case where an application for the “parent patent” has been already filed or the “parent patent” has been already granted, an application for the patent of addition can be filed by an applicant or a patentee of the parent patent.
Patent of addition is effective mainly for protecting an improvement or modification of a parent patent of the patent of addition, the improvement or modification being developed after the parent patent is filed and being not explicitly claimed in the parent patent.
* Patent application can be provisionally filed, but such a provisionally-filed patent application itself is not patented.
2. Patent Application
Patent application can be filed under Paris Convention or PCT. Patent application filed under PCT should enter national phase within 31 months from a priority date of the patent application.
* Note that a patent application filed under PCT should not enter the Australian national phase as an innovation patent. The patent application should enter the Australian national phase as a standard patent, and then be changed from the standard patent to the innovation patent.
3. What to be Submitted
- 1. Application form, specification, claim(s), abstract, and drawings (if necessary)
These documents should be written in English.
* Note that an innovation patent application should include up to 5 claims.
- 2. Notice of Entitlement
This is a document proving that, in a case where an applicant for a patent is not an inventor of the patent, the inventor has transferred the right to obtain the patent to the applicant. The Notice of Entitlement should be signed by a local attorney before being submitted. It is therefore necessary to explain the transfer of the right to the local attorney before filing an application for the patent.
- 3. Priority Certificate (in a case of filing an application under Paris Convention)
4. What to be Protected
You may protect things such as:
- Therapeutic method
- Business methods
- Product by Process Claim
Note that “Human beings and the biological process for their generation” are not patentable (see the Patents Act 1990, Sections 18(2) and 18(3)).
5. Publication of Patent Application
Standard patent application is published after 18 months from the filing date or priority date which is earlier (see the Patents Act 1990, Section 53).
* Innovation patent application is not published.
Substantive examination is conducted for standard patent application. The modified examination system is abolished under the revised patent law. The Global Patent Prosecution Highway (GPPH) *1 was started from January 6, 2014.
*1：IP Australia has agreed to start of the framework among multiple countries “the Global Patent Prosecution Highway” which standardizes kinds of PPH available among 12 countries and region (the US, South Korea, the UK, Denmark, Finland, Russia, Canada, Spain, the Scandinavian Patent Office, Norway, Portugal, and Australia).
- 1. Request for Examination
A request for examination for an application must be filed either within 5 years from an international filing date of the application or within 2 months*2 after the Commissioner issues a direction that the request for examination should be filed, which is earlier (see the Patents Act 1990, Section 44). Note that delay of a request for examination is not accepted under the revised patent law, though delay of a request for modified examination was accepted under the former patent law depending on a situation of an application filed with the USPTO, EPO, etc.
* In a case of an innovation patent, it is necessary to file a request for an examination for the innovation patent after the innovation patent is registered, and to be “certified” through the examination, so as to enforce the right of the innovation patent (see the Patents Act 1990, Sections 101A, and 101B).
- 2. What to be Examined
• Inventive step * Criteria for determining whether or not an invention has inventive step were raised as a result of the reversion of the patent law in 2013.
- 3. Grace Period
Following publication are not taken into account in terms of novelty(see the Patents Act 1990, Section 24).
(1) A case where an application is published under holder’s or patentee’s agreements
(a) A case where an application is published within 12 months before a filing date on which filing of the application completes
(b) A case where an application for an invention is filed within 6 months from a date on which the invention is disclosed in an academic society
(c) A case where an application for an invention is filed within 6 months from a date on which the invention is disclosed in an “approved exhibition”
(d) A case where an application is filed within 12 months from public working of an invention for the purpose of rational testing (for the properties of an invention, only a case where such public working is rationally required)
(2) A case where an application is filed within 12 months from a disclosure date to which neither a holder nor a patentee agrees
(3) A case where an invention is disclosed to governmental organizations
- 1. Amendable period
Amendment can be made after filing of an application and before allowance.
- 2. Amendable scope
Addition of new matter is not acceptable. Amendment of an allowed specification is neither accepted if the amendment results in expanding the scope of claims. It is possible to file a divisional application that includes a claim whose scope is beyond the scope of an allowed claim, within 3 months after a notification of allowance is issued.
8. Due Date for Acceptance
If a patent is not formally granted within 12 months from the date of an initial examination report, the patent will lapse (see the Patents Act 1990, Section 142, and the Patent Regulations, paragraph 13.4(1)(a)). (The due date for acceptance was shortened from 21 months to 12 months as a result of the reversion of the patent law in 2013.)
Opposition against a patent can be filed within 3 months from a notification of allowance of the patent (see the Patents Act 1990, Section 59).
A patentee or a third party can file a request for a reexamination for a registered patent. In a case where the patentee or a requester for the reexamination is dissatisfied with a decision of the reexamination, he/she can file an appeal to the federal court.
- (a) The duration of a standard patent is within 20 years. The duration of a patented invention of pharmaceuticals can be extended for another 5 years at most.
- (b) The duration of a patent of addition depends on the duration of a parent patent of the patent of addition. The duration of a patented invention of pharmaceuticals can be extended regardless of whether or not the duration of a parent patent of the patented invention of pharmaceuticals is extended.
- (c) The protection period of an innovation patent is 8 years from the filing date of an application for the innovation patent.
1. Types of Design
Design has the following two types:
- 1. General design; and
- 2. Multiple designs
• A general design application may be made for:
- (a) one design in relation to one product;
- (b) one design that is a common design in relation to more than one product (e.g., a set of cutlery);
- (c) multiple designs in relation to one product; or
- (d) multiple designs in relation to multiple products, only if each of the products belongs to the same Locarno Agreement class.
2. Design Application
Design application can be filed under Paris Convention. The priority period of a design application is 6 months from a filing date of the design application.
3. What to be Submitted
- 1. Application form, and drawings (These documents should be written in English.)
* Photograph, digital image, and/or sample can be submitted instead of drawings (only if the sample can be easily placed on a flat surface, and can be easily stored together with other documents).
- 2. Documents which are not necessarily submitted but preferably submitted:
(a) Representation of how a design looks;
(b) Prior art document (if it is publicly known at the time of filing of a design application); and
(c) Brief descriptions of how to use a product and a function of the product
4. Registrable Design
New and distinctive design
• Any design previously disclosed anywhere in the world (including on the Internet) or previously used in Australia can be cited as a prior art document.
* Note that following cases are not taken into account as criteria of novelty and distinctiveness provided that a design application is filed within 6 months from a date on which the design was published or used for the first time.
• Publication or use in an exhibition prescribed by the regulations (any publication or use of the design, with the consent of the registered owner of the design, or the registered owner's predecessor in title, in circumstances prescribed by the regulations)
• Unintended publication or use (any publication or use of the design, without the consent of the registered owner of the design, by another person who derived or obtained the design from the registered owner of the design, or from the registered owner's predecessor in title)
5. Publication of Design Application
No publication of design application
Note that an applicant for a design should file a request for publication or registration of the design within 6 months from the filing date (or priority date) of an application for the design. If the applicant does not file the request, the application will lapse.
No substantive examination
If an application for a design passes the formalities check, the design will be registered.
Note that it is possible to file a request for a substantive examination for a registered design in order to certify the registered design (the Designs Act 2003, Sections 63 and 64). In the substantive examination, novelty and distinctiveness of the registered design are examined.
No opposition system
The duration of a design is 5 years from the filing date of an application for the design. In a case where a request for extension of the duration of the design is filed, the duration of the design can be extended for another 5 years at most. Note that the duration of a design whose application was filed on or before June 17, 2004 can be extended for another 11 years at most.
9. Enforcement of Right
A person who has the right of a design should have the design registered, examined, and certified so as to enforce the right of the design.
Neither related design system nor secrete design system has been adopted.
1. Types of Trademark
Goods trademark, service trademark, collective trademark, certification trademark, defensive trademark are to be protected.
Types of trademark include character trademark, graphic trademark, symbolic trademark, three-dimensional trademark, combined trademark, sound trademark, and scent trademark.
One trademark application can be filed for two or more classes.
2. Trademark Application
Trademark application can be filed under Paris Convention or Madrid Protocol.
3. What to be Submitted
- 1. Application form (applicant’s name, address, and contact detail, and nomination of international classification of goods or service)
- 2. Representation of trademark: English translation of non-English words in the trademark, and phonetic translation of characters other than Roman alphabet in the trademark
- 3. Specific and accurate explanation is required for a shape trademark, a sound trademark, a scent trademark, or a color trademark.
4. Publication of Trademark Application
No publication of trademark application
A trademark application which complies with the formality requirements is subjected to a substantive examination in terms of distinctiveness and unregistrable reason.
No system of request for examination
6. Due Date for Acceptance
Trademark application should be allowed within 15 months from an Examiner’s first report. (6-month extension available by request)
In a case where an application for a trademark is not rejected in a substantive examination, the application is published. Opposition can be filed within 3 months from the date of the publication. If no opposition is filed against the trademark application or if opposition is unsuccessful, the trademark will be registered.
Trademark is registered with all registration fees paid, within 6 months after publication of the trademark.
9. Removal for Non-Use of Trademark
If a registered trademark is not used consecutively for three years, the registered trademark is to be cancelled as a non-use trademark.