Australia

competent authority

Australian Intellectual Property Office (IP Australia)

It is part of the Australian Federal Government's Department of Industry and has jurisdiction over patents, designs, trademarks and plant breeding rights.

Treaties related to industrial property rights to which Australia is a member

  • treaty of paris
  • Berne Convention
  • Patent Cooperation Treaty (PCT)
  • WIPO Establishment Treaty (WIPO Treaty)
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms
  • Agreement Establishing the World Trade Organization (WTO)
  • Hague Agreement on Exemption from Consular Certification of Foreign Official Records
  • International Convention for the Protection of New Varieties of Plants (UPOV Convention)
  • Nice Agreement on the International Classification of Goods and Services for the Registration of Marks
  • Trademark Law Treaty
  • Madrid Protocol Concerning the International Registration of Marks

 

Patent

Over 11,378% of patent applications in Australia result from the national phase of PCT applications. Looking at the annual number of applications in Australia by country, the United States has the largest number of applications (2,627), followed by Australia (1,746) and Japan (2012) (XNUMX IP Australia).

 

(From IP Australia 2012 statistics)

 

Type of patent

There are two types of Australian patents:

1.Standard patent

Standard patents are suitable for protecting more complex advanced technology inventions.

2.Patents of Addition

A patent of addition is granted when a patent for the "main invention" (main patent) has been filed or granted, and a new application is filed for an "improvement or modification" of the main invention. A patent of addition can be filed by the applicant for the main invention or by the same person as the patentee of the main patent.
Patents of addition are primarily useful for obtaining protection for improvements or modified embodiments developed after the filing of the main patent and not expressly claimed in the main patent.

    • *Furthermore, there is a provisional patent application system, but a provisional patent application itself will not be granted a patent.

Application route

Applications can be made via the Paris route and the PCT route. In the case of the PCT route, the national phase entry procedure must be completed within 31 months from the priority date.

Documents required for application

  • 1. Application, specification, claims, abstract, and necessary drawings
    Documents must be written in English.
  • 2. Notice of Entitlement
    If the applicant is not the inventor, this is a document explaining that the applicant has inherited the right to obtain a patent from the inventor. The local agent must sign and submit the application, so it is necessary to explain the succession to the local agent at the time of application.
  • 3. Priority certificate for Paris route

Protection target

The following items are covered by patent protection:

  • Method of treatment
  • software
  • Business Model
  • Product-by-process claims

Furthermore, "human beings and biological methods for their production" are excluded from protection (Article 18 (2) (3) of the Act).

Application publication

Standard patent applications are published 18 months after the filing date or the priority date, whichever is earlier. (Article 53 of the Act)

Examination

Standard patent applications are subject to substantive examination. Please note that the revised examination system has been abolished under the revised law. The GPPH (Global Patent Prosecution Highway*) has been launched since January 2014, 1.

1 Request for examination

Within 5 years from the international filing date (filing date) or from the direction of the Commissioner of the Patent Office2 months* You must file a request for review by the earliest of these dates (Article 44 of the Act). In addition, before the law revision, in the case of amended examination, it was possible to delay the request for examination depending on the application status of US, EP, etc., but this has been abolished under the revised law.

2 Screening details

·Novelty
・Inventive step *The standards for determining inventive step have been raised due to the 2013 law revision.
·Usefulness

3 Grace Period

Publication in the following cases will not be considered for novelty (Article 24 of the Act):

(1) When it is published with the consent of the patentee or patentee
a) Published within 12 months of the filing date of the complete application;
b) When the application is submitted within 12 months of publication in an academic organization.
c) When the application is filed within 12 months from the disclosure of the invention at an “approved exhibition”
d) The application is filed within 12 months of the public exploitation of the invention for reasonable testing purposes (only if the nature of the invention reasonably requires such exploitation).
(2) When the application is filed within 12 months from the date of disclosure without the consent of the patentee or patentee
(3) All disclosures to government agencies are not considered.

correction

1. Timing of correction

Amendments can be made at any time after application and before approval.

2. Scope of correction

Addition of new matters is not permitted. Additionally, amendments to the specification after approval will not be allowed if the claims are expanded as a result of the amendment. However, for a period of three months after publication, it is possible to file a divisional application with claims that fall outside the scope of the allowed claims.

Acceptance deadline

An application will be invalid if it is not formally granted within 12 months from the date of the first examination report (Article 142, Regulation 13.4(1)(a)). (This period was shortened from 2013 months due to the 21 law amendment.)

Objection

It is possible to file an opposition within three months from the date of publication of the patent grant (Article 3 of the Act).

reexamination

The patentee or a third party can request reexamination after the patent has been registered. Patent owners or applicants for reexamination who are dissatisfied with the reexamination decision can appeal to the federal court.

Registration

a) The term of a standard patent is within 20 years, and the term of a medical patent can be extended for up to 5 years.

b) The term of the patent of addition is bound by the term of the main patent. In the case of pharmaceutical patented inventions, the term can be extended regardless of whether the term of the main patent is extended.

innovation patent

Applications for new innovation patents ended on August 2021, 8. Existing innovation patents and innovation patents with filing dates on or before August 25, 2021 are valid until the expiration of a maximum period of eight years from the filing date.

Additionally, the following procedures will be possible after August 2021, 8.

　(2021) Split innovation patent application from a parent application filed before August 8, 25

　(2021) Change from standard patent application to innovation patent application before August 8, 25

 

 

design system

Type of design

There are two types of designs:

  • 1. Regular design
  • 2.Multiple designs

・Only applications that fall under any of the following can be submitted as one application.

  • a) One design for one article
  • b) One design common to multiple articles (knife and fork set, etc.)
  • c) Multiple designs related to one article
  • d) Where multiple articles belong to the same class of the Locarno Agreement classification, multiple designs related to them;

Target of protection: Shape, external shape, pattern, and decoration of articles
Not subject to protection: Items whose texture, material, and size are not determined, and continuous patterns of one or more units

(1) Partial design
Designs are considered to relate to the overall appearance of a product, and design protection cannot be applied to only a part of an article. However, it is possible to use the Statement of Newness and Distinctiveness to describe the characteristic shape of a product as a feature of the design. Additionally, although it is not permitted under the Design Act, it has been a common practice to represent non-characteristic parts with broken lines.

(2) Non-physical designs and “active state” designs
App icons and GUIs are not physically applied to a specific item, but appear temporarily on the product screen. Currently, many GUIs are registered and published on the database. However, it is highly likely that the Australian Intellectual Property Office will not certify this as falling outside the definition of a "design", and in that case, even if it is registered, it will be considered a valid design right and cannot be exercised by others. I can not do.

Application route

It is possible to apply via the Paris route. The priority period is 6 months from the filing date.

Documents required for application

1. Application form and drawings (Documents must be prepared in English.)
*Photos, digital images, and samples (limited to those that can be easily placed on a flat surface and easily saved with other documents) may be submitted in place of drawings.

2. Documents to be submitted that are not required but are good to have
a) Characteristic description
b) Prior art documents (if known at the time of filing)
c) A brief explanation of how to use and function the product.

Registrable designs

Designs that have novelty and distinctiveness

・Prior reference criteria must be published worldwide or used in Australia.

◇Grace period

A 2022.3.10-month grace period was introduced by the revised Design Law that came into effect on March 12, XNUMX.


・The application must be filed* within 12 months of the first disclosure of the design
　(*In the case of priority claim, the filing date is based on the priority date.)
・The first disclosure of the design is by the designer, the holder, his successor, a person authorized by the designer or the holder, or the design has been plagiarized.


・Publication through design registration
・Disclosure by foreign offices and international organizations (WIPO)

*Applies to applications filed on or after 2022.3.10 or whose priority date is on or after 2022.3.10
*For disclosures made before March 2022.3.10, 12, the XNUMX-month grace period will not apply, but the existing provisions below will apply.

- Only if a design application is filed within six months from the date of first publication or use of the design, it will not be considered as a criterion for determining novelty and distinctiveness.
・Publishing or using a design at an exhibition as prescribed by the regulations (disclosing or using a design in circumstances prescribed by the regulations with the consent of the registered owner of the design or the registered owner's previous title holder)
・Unintentional disclosure or use (disclosure or use of a design by the registered owner of the design or another person who has derived or acquired the design from the registered owner's previous owner) without the consent of the registered owner of the design; use)

Application publication

There is no application publication system.

However, the design applicant must file a request for publication or registration within six months from the filing date (or priority date). If neither request is made, the application will cease to exist.

Examination

There is no substantive examination, and if the formality examination is satisfied, it will be registered.

Furthermore, in order to prove the registered design, a substantive examination can be requested after registration. (Design Law Articles 63 and 64) In that case, novelty and distinctiveness will be examined.

Objection

There is no objection system.

Registration

The validity period is 5 years from the filing date. The maximum period is 10 years from the filing date if you apply for an extension. However, if the application date is before June 2004, 6, the maximum period is 17 years from the filing date.

Exercise of rights

Before a design right holder can exercise his or her rights, the design application must be registered, substantively examined, and certified.

Others

The related design system and secret design system are not adopted.
It is not a party to the Geneva Amendment of the Hague Agreement on the International Registration of Industrial Designs.

 

 

trademark system

Types of trademark registration

Protection is available for goods, services, collective marks, certification marks, and defensive marks.

Types of trademarks include word trademarks, figure trademarks, symbol trademarks, three-dimensional trademarks, combination trademarks, sound trademarks, and scent trademarks.

We use the one-trademark, multiple-classification system.

Application route

Applications can be made via the Paris route or the Madpro route.

Documents required for application

  • 1. Application form (applicant address and name, international classification of goods and services)
  • 2. Trademark representation: English translation of foreign words and transliteration of non-Roman characters in the trademark
  • 3. A clear explanation is required for shape, sound, smell, and color trademarks.

Application publication

None

Examination

If the formal requirements are met, a substantive examination will be conducted regarding distinctiveness and reasons for non-registration.

There is no review request system.

Acceptance deadline

Applications must be allowed within 15 months of the first office action. (Can be extended for 6 months upon request)

Objection

If there are no reasons for refusal in the substantive examination, the application will be announced. You can file an objection within three months from the date of publication. It will be registered if there is no objection or if the objection is not established.

Registration

It will be registered if the registration fee is paid within 6 months after the publication.

Non-use cancellation system

If a trademark is not used for three consecutive years after registration, it will be subject to non-use cancellation.

 

 

Comparison of patent systems between Australia and New Zealand

  Australia New Zealand
treaty of paris 〇 〇
WTO membership 〇 〇
PCT 〇 〇
EPC × ×
survival
period		 Starting date (Domestic patents) Application date of complete specification, (International applications such as PCT) International filing date.  
period (Normal application) 20 years, (Additional patent) Remaining period after the main patent  
Extension None None
Unique patent system Additional patents (improvements of the main patent).  
Inventions that cannot be patented Biological methods for creating humans and generations. Inventions that violate public order and morals. A substance that can be used as food or medicine. Mere mixture of known substances. A method of producing a substance that is simply a mixture. Plans, rules and methods of accomplishment for mental activities, playing games or doing business. Mere information (work systems, document storage methods, mathematical formulas, arrangement of words and symbols), discoveries, and the treatment of people.
Objection March March (1 month extension possible)
Obligation to perform Three years have passed since the patent. Three years have passed since the patent.

　Reference: General Incorporated Foundation, Economic and Industrial Research Council, Patent News, Published March 28, 3

 

 

Australian Patent Minimum Required Fee and Pension (Effective Date: December 1, 2012)

Application fee paper AS$470
Electronic AS$370
・Examination request fee AS$490
　*Australian Patent Office is IPER
　Examination request fee when preparing (International Preliminary Examination Report) AS$300

・Patent issue fee AS$250
　Claims with more than 20 items AS$110/item
Pension (patent fees, etc.)
1st year -
2nd year -
3rd year -
4th year -
5th year AS$300
6th year AS$300
7th year AS$300
8th year AS$300
9th year AS$300
10th year AS$300
11th year AS$500
12th year AS$500
13th year AS$500
14th year AS$500
15th year AS$500
16th year AS$1,120
17th year AS$1,120
18th year AS$1,120
19th year AS$1,120
20th year AS$1,120
21st year AS$2,300
22nd year AS$2,300
23rd year AS$2,300
24th year AS$2,300
25th year AS$2,300
Duration of patent right 　20 years from the patent date

　Reference: Patent Office Annual Patent Administration Report

 

 

 

Patent attorney advisor　　Minoru Goto

<Related page>
Foreign/Intellectual Property Translation Foreign Support Office Latest foreign information Information on emerging countries, etc. PCT Support Office

Top