What types of patents are available in Australia?
In Australia, there are two different types of patents, namely standard patents and innovation patents. A standard patent is intended to cover inventions whereas an innovation patent is intended to cover innovations or ‘second tier inventions’ which are not considered to possess full inventive merit but still make a substantial contribution over what is currently known or used.
In the case of a standard patent, a patent of addition may also be granted for an improvement in or modification of the main invention in the standard patent.
This is for applications filed:
- on or after 1 April 2002: absolute and whole of contents novelty (whole of contents documents only applicable to novelty and not inventive step)
- between 30 April 1991 and 31 March 2002 (inclusive): relative and whole of contents novelty (whole of contents documents only applicable to novelty and not inventive step), and
- before 30 April 1991 local novelty and prior claiming.
An invention is taken to involve an inventive step when compared with the prior art unless it would have been obvious to a person skilled in the in the light of common general knowledge in Australia.
For applications filed on or after 1 April 2002 it is possible to combine two or more prior publications under an objection for lack of inventive step.
For applications filed between 30 April 1991 and 31 March 2002 (inclusive), generally speaking, each prior art document can only be considered separately under an objection for lack of inventive step.
For applications filed on or before 29 April 1991 prior art documents can only be considered under obviousness if they form part of the common general knowledge.
Patents are granted for inventions in many fields of scientific and engineering endeavour for both products and processes. Generally, patents are granted for those inventions which relate to the useful arts as distinct from the fine arts. Mere mental processes or discoveries are not patentable. To be patentable, the mental process or discovery must be embodied in a product or process which relates to the useful arts. For example, the discovery of a chemical phenomenon may not be patentable whereas a chemical process embodying the phenomenon is more likely to be patentable.
A mathematical algorithm is not patentable in itself. On the other hand, a computer program employing an algorithm, for example, for air traffic control, would be patentable in Australia. Likewise, business systems and software implementing specific business processes are generally patentable in Australia.
Australian patents law also expressly excludes human beings and processes for generating human beings from being patented.
Anyone may file a patent application in Australia. The Patents Act 1990 (Cth) however limits the category of those who may be granted a patent. A patent may be granted to the inventor. If the invention is made in the normal course of employment with a company then the company may be entitled to the grant of a patent. In other cases, the inventor may assign the rights to another person, making that person entitled to the patent. Where the inventor is deceased then their legal representative may be entitled to the patent.
The minimum requirements are:
- a PCT application number, and
- an English translation of the international application as amended under PCT Articles 19 and 34 if it was not published in English.
To follow you must provide:
- a copy of the international application including any Article 19 and/or 34 amendments. (optional)
- a copy of the International Preliminary Report on Patentability.
- details as to how the applicant derives its rights to the invention from the inventor, for example, by assignment or employment, and
- the name of the applicant in the basic application (if convention priority is claimed). If the basic applicant is not the same as the applicant, we need to know how the applicant is entitled to claim priority from the basic application, for example, on the basis that it either has the consent or is the assignee of the basic applicant.
The minimum requirements are:
- a copy of the specification in English including description, claims, abstract and informal drawings
- the name and address of the applicant and name of the inventor, and
- the priority details including the country, number and filing date of the basic application.
To follow you must provide:
- formal drawings within three months of filing
- details as to how the applicant derives its rights to the invention from the inventor, for example, by assignment or employment, and
- the name of the applicant in the basic application. If the basic applicant is not the same as the applicant, we need to know how the applicant is entitled to claim priority from the basic application, for example, on the basis that it either has the consent or is the assignee of the basic applicant.
A certified copy of the priority document is only required if requested by the Patent Office.
The minimum requirements are:
- a copy of the specification in English including description, claims, abstract and formal drawings, and
- the name and address of the applicant and name of the inventor.
To follow you must provide:
- formal drawings within three months of filing, and
- details as to how the applicant derives its rights to the invention from the inventor, for example, by assignment or employment.
Australia is a signatory to the Budapest Treaty and will recognise a deposit of a sample of a micro-organism or other life form as being a sufficient description of the invention. The deposit must have been made with a recognised International Depositary Authority on or before the filing date of the specification in Australia. The following relevant information concerning the deposit must also be provided in the specification by the time the specification is published. This includes:
- the name of the prescribed depositary institution from which a sample of the deposited micro-organism is obtainable, and
- the file, accession or registration number given to the deposit by the institution.
This document sets out the applicant’s entitlement to the grant of the patent. It also sets out the entitlement of the applicant to claim Convention priority from the basic application.
When should a Notice of Entitlement be filed?
The Notice of Entitlement is due before acceptance. It is our usual practice to withhold the filing of the Notice of Entitlement to ensure the issuance of an examination report. In that way, the applicant will be provided with an opportunity to make any necessary or desirable amendments during examination to take into account the results for foreign prosecution. The scope for amendment during examination is broader than after acceptance.
If the applicant has filed declarations pursuant to Rule 4.17 during the international phase, the applicant may not be required to file a Notice of Entitlement.
An application for a standard patent is usually published automatically by the Patent Office at approximately 18 months after the priority date. However, publication can occur earlier if the application is accepted for grant earlier than this. The applicant may also request early publication and this might be desirable where a competitor has brought an infringing product onto the market. Although a patent applicant cannot sue for infringement until grant, monetary damages may accrue from the time the complete specification is published at which time the competitor is able to review the published specification.
If the applicant no longer wishes to proceed with patent protection and wants to withdraw his application without publication then an application to withdraw must be made at least three weeks prior to the anticipated publication date.
A divisional application retaining the same priority as the parent application, for subject matter disclosed in a parent application for a standard patent, may be filed within three months of advertisement of acceptance (allowance) of the parent application.
Additionally, the divisional procedure can be used as a type of United States-style continuation application, either where acceptance of the parent application is not achieved within the 21 month examination period or where the parent application has been allowed and the applicant wishes to prosecute broader claims.
Furthermore, new matter may be added to the divisional application much like a United States-style continuation-in-part application. The new matter obtains a priority date as of the date of filing.
In Australia, an application for a standard patent is not examined automatically. In order to have the application examined, a request for examination must be filed, usually within six months of receiving a direction from the Patent Office.
Due to present backlogs at the Patent Office, directions to request examination are currently issuing at around four to five years after the priority date. If a request for examination is not filed by the due date, the application lapses.
If speedy grant of a patent is desirable, for example for commercial reasons or in the case of infringement, the applicant may ask for expedited examination at any time.
There are two types of examinations in Australia: ordinary and modified examination. Modified examination may be requested where there is a corresponding United States, United Kingdom, Canadian, New Zealand or English-language European granted patent. Under modified examination, the specification must be brought into conformity with the granted patent, apart from matters of form and obvious mistakes. Claims may also be deleted with consequential amendments made to the remaining claims. We strongly recommend that ordinary examination be used.
Modified examination can only be requested for an Australian patent application if a corresponding United States, United Kingdom, Canadian, New Zealand or English-language European patent has been granted.
What if my corresponding application isn’t granted yet?
If a corresponding patent in any one of the above countries has not been granted by the due date for requesting modified examination, a nine-month deferment is available.
What are the advantages of modified examination?
Modified examination can sometimes save prosecution costs (although this depends on the extent of the amendments necessary to conform the Australian application to the corresponding foreign patent).
Modified examination may be advantageous where there is clearly more than one invention claimed in the application since modified examination will avoid the need for divisional applications.
What are the disadvantages of modified examination?
A granted patent having the specification in the form of the corresponding overseas patent may not comply with the Australian requirements of fair basis, sufficiency of description, and clear and succinct claims.
The main drawback is that if argument or the cancellation of a claim or claims cannot overcome novelty objections, the only course is to convert to ordinary examination with the consequent additional cost.
What are the requirements for modified examination?
If necessary, an amendment must be lodged to bring the Australian specification into exact conformity with the granted patent, except for matters of form and obvious mistakes in the granted patent. Claims of the patent can also be deleted with consequential amendments, for example, renumbering is permitted.
As a result, the cost of requesting modified examination basically may be greater than that of ordinary examination. However, prosecution is sometimes simplified.
It is not longer necessary to lodge a certified copy of the corresponding granted patent, unless requested by the Patent Office.
What amendments are permissible under modified examination?
The only allowable amendments are amendments which are made to bring the specification into line with the corresponding foreign patent, correction of obvious mistakes, deletion of claims and consequential amendments as a result of claim deletion, for example, renumbering claims.
In both cases of normal examination and modified examination, an initial period of 12 months is provided. The final deadline for placing the application in order and achieving acceptance (allowance) from the examiner is 21 months from issuance of the first examination report. Late response fees are payable for any response filed after the initial 12-month period and these accrue on a monthly basis.
There is no general duty of disclosure. The requirement to file search results has been abolished.
Voluntary amendments can be filed at any time during the pendency of an application or after grant, upon payment of a voluntary examination fee. However, amendments filed during examination or with the request for examination do not incur a voluntary amendment fee.
What types of amendments are allowable before acceptance (allowance)?
Before acceptance, the complete specification may be amended, even to add new matter, provided that no claim, as a result of the amendment, claims matter that was not in substance disclosed in the specification as filed.
Naturally, amendments should be made to take into account search and examination results from other jurisdictions to ensure, as far as possible, the validity of the Australian granted patent. During prosecution, it is our standard practice to conform the specification to the claims on file and also to add a paragraph indicating that the term ‘comprising’ is not to be construed narrowly as per Federal Court decisions.
At the time of acceptance, the Patent Office also charges substantial excess claim fees for applications with more than 20 claims. Therefore, we recommend that consideration be given to deletion of claims or other strategies in order to reduce excess claim fees.
What amendments are permissible under modified examination?
The only allowable amendments are amendments which are made to bring the specification into line with the corresponding foreign patent, correction of obvious mistakes, deletion of claims and consequential amendments as a result of claim deletion, for example, renumbering claims.
After acceptance, the complete specification may be amended, even to add new matter, provided that no claim, as a result of the amendment, claims matter that was not in substance disclosed in the specification as filed. In addition, amendments to claims are not allowed if, as a result of the amendment, the claim would not fall within the scope of the claims before the amendment. Thus, care must be taken when amending independent claims but generally speaking, dependant claims may be freely amended or added, provided they are supported by the specification.
What is the procedure for third party opposition?
The opposition process is initiated by filing a notice of opposition, which must be lodged at the Patent Office within three months of the advertised acceptance. The opponent must then , within three months, serve on the patent applicant a statement setting out the basis for the opposition, for example details of material prior art.
The opponent then has an opportunity to file evidence in support of the opposition. The evidence usually takes the form of statutory declarations by experts suitably qualified in the relevant field. These experts provide evidence on the state of common general knowledge or may provide their interpretation of the prior art so that the hearing officer will be in a position to assess inventive step.
Once the evidence in support is served, the patent applicant has an opportunity to serve evidence in answer to the opponent’s evidence. Such evidence may comprise another expert’s views contrary to those of the opponent’s experts. After that, the opponent has a final opportunity to serve evidence in reply to the applicant’s evidence. Extensions can be obtained for most of the time periods for preparing evidence and thus the process can be quite drawn out. It is not uncommon for the process of evidence preparation and collection to exceed two or three years.
When the evidence is complete, the case will be heard by the Patent Office before a hearing officer, usually in Canberra. The hearing is usually based on the written evidence and it is unusual for experts to appear and give oral evidence at the hearing. The hearing officer usually issues a written decision some months after the hearing. It is possible to appeal that decision to the Federal Court.
What is the maximum term of an Australian patent?
In the case of Convention and non-Convention applications, the maximum term of a standard patent is 20 years from the date of filing in Australia. For PCT national phase entries, the international filing date is taken as the date of filing. Innovation patents have a maximum term of eight years from their filing date.
A standard patent resulting from a divisional application has its 20-year term calculated from the date of filing of the earliest parent or grandparent application, as the case may be. As a general rule, a patent of addition ceases when the main patent ceases.
When are renewal fees due?
For standard patents, annual fees are due on or before the fifth anniversary of the filing date and annually thereafter.
For divisional applications for a standard patent, the annual renewal fees are payable when due on the parent application.
Is it possible to extend the term of an Australian patent?
It is possible to extend the term of an Australian patent that has a claim to a pharmaceutical substance. The Extension of Term regime applies where:
- there is a patent that contains at least one claim covering a ‘pharmaceutical substance’ (as defined) which must be used for ‘therapeutic purposes’ (as defined)
- a pharmaceutical substance is included in the Australian Register of Therapeutic Goods (ARTG), and
- there has been a period of more than five years from the filing date of the patent to the date of first regulatory approval of the pharmaceutical substance.
The claim must cover a pharmaceutical substance per se, or a pharmaceutical substance when produced by a process that involves the use of recombinant DNA technology. In some instances, the pharmaceutical substance can include a mixture or compound of substances.
How long is the possible extension?
The term of a patent may be extended by up to five years.
Are there marking requirements in Australia?
Marking is not compulsory in Australia.
However, the prospects of obtaining damages are improved if articles made in accordance with the invention, their packaging or associated promotional material are marked so as to indicate that they are covered by a patent or a pending patent application in Australia. While the Australian application is pending, it is an offence to represent that an Australian patent has been granted.
Are there working requirements in Australia?
There is no requirement to prove working. However, if an invention has not been commercially worked in Australia within three years of grant, it may become subject to compulsory licensing.
What are the requirements for recording an assignment?
An assignment may be recorded against an application or a patent. To record the assignment, we require a certified or notarised copy of the assignment document. The assignment of a granted patent must be executed by both the assignor and the assignee. A Power of Attorney form is not required in Australia.
What are the requirements for recording a change of name?
To record a change of name, we require an official extract or certificate from the relevant government body responsible for regulating companies. A Power of Attorney form is not required in Australia.
