Australia.

The deadline for national phase entry in Australia is 31 months from the earliest priority date. The deadline is not extendable as of right. National phase entry before publication of the international application is permitted.

An extension of time to enter national phase in Australia is usually available if the failure has arisen as a result of an error or omission. Failure to make a diary entry is an example of an error or omission. Please contact us if an extension of time is required.

The international application or publication number is required to proceed with national phase entry in Australia if the international application was published in English. However, a copy of the application as originally filed must be provided if national phase entry is requested prior to publication of the originating international application.

Excess claim fees are not payable upon national phase entry.

A Power of Attorney or any other document executed by an Applicant or an Inventor is not required for national phase entry in Australia. However, we will need confirmation of the manner in which the Applicant derives entitlement from the Inventor(s) to grant of the patent in Australia (e.g., by way of assignment, employment contract), preferably together with copies of any documents establishing that entitlement.

An English translation of the specification must be filed with national phase entry in Australia.

A simple translation of the PCT specification as originally filed will satisfy filing requirements. The requirement to file translations of the Article 19/34 amendments with national phase entry has been removed. Under the new regulations, Article 19/34 amendments can be incorporated into the specification after national phase entry by way of a formal amendment. Article 19/34 amendments filed with the national phase application will be incorporated into the specification.

An Examiner may request a verified English language translation of the priority document if a validity-related issue arises, in which determination of the correct priority date is important.

An application under the Paris Convention may be filed in Australia 12 months from the earliest priority date. The following information will be required to secure a filing date:

• A copy of the complete specification in English (title, description, claims, drawings/sequences if any, and an abstract)
• The official number, filing date, and country of the priority application(s)
• The name of the inventor(s)
• The name, address, and nationality of the Applicant(s)

A copy of the priority application(s), and a verified translation thereof (if applicable) will need to be provided if requested by an Examiner. A Power of Attorney is not required. We also require confirmation of the manner in which the Applicant derived entitlement from the Inventor(s) to grant of the patent in Australia (e.g., by way of assignment, employment contract), preferably together with copies of any documents establishing that entitlement. Entitlement information can be provided after filing of the application.

It is possible to file a preliminary amendment together with national phase entry in Australia. However, it is recommended that a preliminary amendment be made when requesting examination. This avoids the need to pay a voluntary amendment fee.

Preliminary amendments will be recommended if the description and/or the claims need to be brought into conformity with best practices for Australia.

Australia is a first-to-file, absolute novelty country. Publication of the invention or public use anywhere in the world before the priority date can invalidate any patent granted on an application.

Australia has a 12-month “grace period.” Non-confidential disclosure made by the inventors or their successors in title is not invalidating, provided a complete Australian patent application is filed within 12 months of the disclosure. The filing of an international application designating Australia is sufficient to trigger the Grace Period. No declarations as to when the first disclosure was made have to be lodged. A 12-month grace period is also available for secret commercial use by the Applicant.

A condition is attached to the grace period. A third party that takes steps to exploit the invention prior to the filing of the Australian patent application will be immune from infringement once the application has proceeded to grant. Consequently, the Grace Period should only be relied upon if absolutely necessary.

The Grace Period is not triggered by the filing of a provisional application, only by the filing of a complete application in the form of a standard or innovation Australian patent application or an international application designating Australia.

A Request for Examination must be filed within five years of the filing date of the application. Failure to request examination will result in abandonment of the application. However, the Commissioner will usually direct the Applicant to request examination prior to the 5-year anniversary of the filing date. The Direction to Request Examination sets a non-extendable, two-month deadline to request examination.

Under Australian practice, it is necessary to make a Statement of Entitlement to the grant of a patent. In order to substantiate the Statement of Entitlement at the time of examination response to the following questions is required:

• Do(es) the Applicant(s) has/have entitlement from the actual inventor(s) (e.g. by way of employment, agreement, assignment or contract)?
• Is/Are the Applicant(s) the applicant(s) on the Basic application(s)? If not, do(es) the Applicant(s) have entitlement from the Applicant(s) of the Basic application(s)?
• Is/Are the Basic application(s) the first application(s) made in a Convention country in respect of the invention? If not, we need the application number(s) of the first filed Basic application(s), which will need to be formally disregarded.

Expedited examination may be requested, which will typically result in issuance of an examination report within four to seven weeks depending on the workload at IP Australia. However, cogent reasons for requesting that examination be expedited must be provided. These can include such reasons as commercialisation demands, pending or existing license agreements and potential or existing infringement.

A request made under a Patent Prosecution Highway program is another avenue to expedite examination should claims have been granted in a corresponding partner patent office. Here is more information regarding Australia’s involvement in Patent Prosecution Highway programs.

Issuance of a first examination report sets a 12-month period for overcoming the issues raised during examination. This is not a response deadline. The application must be accepted by the 12-month acceptance deadline. The deadline is not extendable and failure to gain acceptance by this deadline will result in lapsing of the application. It is recommended that a response to the first examination report is filed as soon as possible in case further examination reports issue. If acceptance has not been achieved by the acceptance deadline, a divisional application can be filed prior to the acceptance deadline to continue prosecution.

The application will be accepted once all the issues are resolved. Acceptance of the application will be advertised in the Journal of IP Australia for a period of 3 months. During this time, any third party can file a Notice of Opposition. Divisional applications must be filed within 3 months of the publication of acceptance. A penalty fee of $110 per claim over 20 at acceptance is payable.

It is possible to request postponement of acceptance to a date no later than the acceptance date. A request to postpone acceptance is typically made at the time of requesting examination. A key advantage of having a postponement of acceptance in place is that it provides more time to consider divisional applications and to reduce claim numbers.

A divisional application must be filed while the parent application is pending, and no later than 3 months from the date of advertisement of acceptance of the parent application. It is possible to request postponement of acceptance of the parent application to provide more time to consider a divisional application. Postponement of acceptance of the parent application cannot extend beyond the acceptance date.

Under Australian practice, a divisional application may include and claim matter which was not disclosed in the parent application, with the caveat that in order to derive priority from the parent, at least one claim of the divisional application must define an invention that is disclosed in the parent in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.

Renewal fees are payable on the fourth anniversary of the complete application filing date, and annually thereafter, irrespective of whether a patent has been granted.

The term of an Australian patent is 20 years from the filing date. However, this term can be extended by up to 5 years for pharmaceutical patents, with the exception of method of treatment claims and Swiss-style claims.

The following material is required to secure a filing date for an Australian trade mark application:

• Details of the trade mark inclusive of any claim to a colour limitation. Absent a colour limitation, a trade mark application is considered not limited to a colour regardless of whether the representation is filed in colour. If the trade mark includes graphical elements, a high-quality electronic file, preferably in JPEG or TIFF format, is required.
• A description of goods and/or services categorised pursuant to the Nice Convention. Multi-class applications are permitted.
• The name and address of each Applicant. An Applicant must be an individual, a company, an incorporated association, a statutory body, or other legal person. An ACN must be provided for an Australian company.

Applications lodged in the name of unincorporated trusts, business names, trading styles, unincorporated associations, clubs, partnerships per se,  or societies will not be allowed since these entities do not have a legal personality.

Under the Trade Marks Act 1995, the owner of a trade mark is the party that uses, or controls use of, the trade mark. The Applicant of a trade mark application must be the current user or must have a bona fide intention to use the trade mark, or to authorise a third party to use the trade mark. Control of use of a trade mark includes exercising effective practical control over use of the trade mark in respect of the relevant goods and/or services. This includes exercising quality control over the goods and/or services to which the trade mark is applied by another entity or exercising financial control over the relevant trading activities of that entity in the goods and/or services.

A Full Federal Court decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 set down that if an Applicant is not the true owner of the trade mark, or cannot claim ownership of the trade mark when an application is filed, this defect cannot be cured post-filing. Consequently, failure to properly identify the correct owner of the mark at the time of filing the application can lead to the irrevocable loss of the trade mark registration. Here is an article on the importance of  ensuring that the correct owner is recorded on the Register.

There are two grounds on which a party can claim to be the owner of a trade mark:

1. By being the author of the trade mark and having used or authorised the use of the trade mark; or
2. By authorship of the trade mark, filing the application for its registration and intending to use or intending to authorise another person to use the trade mark.

Should you have any questions with regard to ownership, please contact us prior to filing of the trade mark application.

A trade mark application claiming Paris Convention priority from a foreign application must be filed within 6 months of the filing date of the first filed application. The Australian convention application must be for the same trade mark as the trade mark of the earlier filed application. Partial overlap of goods and/or services is sufficient to establish priority.

The following material is required to secure a filing date:

• Details of the mark inclusive of any claim to a colour limitation. If the mark includes graphical elements, a high-quality electronic file, preferably in JPEG or TIFF format, is required.
• A description of goods and/or services categorised pursuant to the Nice Convention. Multi-class applications are permitted.
• The name and address of each Applicant. An Applicant must be an individual, a company, an incorporated association, a statutory body, or other legal person.
• The official number, filing date, and country of the priority application(s).

Neither a power of attorney nor a copy of the basic application is required for filing a convention trade mark application.

A priority claim can be made no later than two workings days after filing the Australian trade mark application.

Australia is a member of the Madrid Protocol.

For a standard application, an examination report will typically issue within 9-12 months of the filing date. For an IRDA, a provisional refusal will issue before expiration of the 18-month time limit. Examination may be expedited with provision of cogent reasons for accelerated examination.

The time limit to overcome all grounds of objection and achieve acceptance of the application is 15-months from the date of the first examination report or provisional refusal. The date is extendable by up to 6-months with payment of monthly extension fees. The extension must be requested prior to the expiration of the 15-month date, or the next extended deadline.

When the application complies with the requirements of the Trade Marks Act 1995, the application will be accepted and a Notice of Acceptance will issue. Acceptance of an application is advertised for 2 months once it has been accepted. During that time, any third party can oppose the registration of the trade mark. In the absence of an opposition, the application will proceed to registration. A trade mark application may be registered at any time within the 6-month period after advertisement of acceptance.

An opposition to a trade mark registration by a third party may be made on any one of a number of grounds including, but not limited to, ownership of the trade mark, likelihood of confusion with a prior filed registration or application, and that the application was made in bad faith.

A divisional application is permitted in Australia, with the caveat that the parent application must be pending at the time the divisional application is filed and the goods/services of the divisional application must still be present in the parent application at the time of filing the divisional application.

There is no statutory requirement to include a basis of use in an Australian trade mark application. There is a presumption that the mark is in either in use, or will be used during the course of trade to distinguish the claimed goods and/or services from those of other traders. Moreover, there is no obligation that the owner of the trade mark demonstrates use of the trade mark as a condition of registration, or for maintenance of the trade mark on the trade mark register. Therefore, a trade mark can remain on the Australian trade mark register indefinitely without actual demonstration of use on the claimed goods and/or services during the course of trade.

Under s92 of the Trade Marks Act 1995, a person may apply to the Registrar to have a trade mark removed from the register on the grounds that the trade mark has not been used in respect of some, or all, of the claimed goods and/or services. The owner of the registration then bears the onus to show use, or satisfy the Registrar that there have been circumstances that have prevented use, such that the registration should remain on the register.

A non-use action can be useful for removal of a competitor’s mark from the Australian trade mark register, or removal of a registration that has been cited against the registrability of an application.

A trade mark registration can be renewed every 10 years from the date of registration. The renewal can be paid 12 months in advance of the deadline.

An international registration designating Australia is renewed at WIPO using the centralised Madrid Protocol renewal procedure.

The following material is required to secure a filing date for an Australian design application:

• A set of high quality realistic representations showing at least one three dimensional view and a number of elevations. The minimum requirement is that the representations show all the features of the product which embodies the design. Unclear representations or representations not showing sufficient information will trigger a formality objection. It is possible to respond by providing improved representations in response to such an objection, provided that does not result in the addition of further material.
• The name of the product in relation to which the design is to be registered.
• The name and address of the applicant(s) and the name of the designer(s).

Applications lodged in the name of trusts, business names, trading styles, unincorporated associations, clubs, partnerships per se or societies, will not be allowed since these entities do not have a legal personality.

An application for the registration of a design claiming Paris Convention Priority from a foreign application must be filed within 6 months of the filing date of the first filed application. The Australian convention application must be for the same design as the design of the earlier application. The scope of protection is limited to the representations filed with the application. However, it is possible to have a “Statement of Newness and Distinctiveness” so that Newness and Distinctiveness can be assessed with regard to particular visual features. This can bring the Australian application into conformity with the basic application.

The following material is required to secure a filing date:

• The official number, filing date, and country of the priority application(s).
• A copy of the representations filed with the priority application(s).
• The name and address of each Applicant and Designer.
• A copy of any assignment documentation in terms of which the designer(s) has assigned rights to the applicant(s). Alternatively, we will need confirmation of the manner in which such assignment has occurred.

A Power of Attorney is not required.

Australia has not yet joined the Hague System.

An application for the registration of a design is only examined for compliance with formalities. Usually, the application will proceed to registration within about a month. However, the registration will need to be examined for compliance with substantive statutory requirements and a certificate issued before it can be enforced.

A design registration is renewable once within 5 years of the filing date. Renewal provides a further 5 years of registration for the remainder of the 10 year life of the registered design.