1b) Australia

Question 1

Types of Patent

Answer 1

 Standard patent – 20 year term
 Patent of Addition – term limited to parent
 Innovation Patent – 8 year term (replaces old petty patent). Will not be accepted by the Office from 26 August
2021.

Question 2

Patentable Inventions

Answer 2

1. Novelty/Inventive step
    Absolute novelty (since 1 Apr 2002)
    Pre-filed post published Australian patent (or PCT which designates Australia) is novelty only prior art
2. Grace Periods
    1 year grace period (since 1 April 2012) before the filing date for any disclosure by the applicant or an abusive
   disclosure.
3. Exclusion to patentability
    Applies Manner of Manufacture (within the meaning of Section 6 of the UK Statute of Monopolies). Allows
   business methods, computer programs, methods of medical treatment.
    Excludes:
   o Human beings and the biological processes for their generation
   o Where use of the invention would be contrary to law
   o A mere admixture of known ingredients
   o An invention which is mischievous / hurts trade / generally inconvenient
   o Decision on 13 September 2019 that computer implemented inventions for an abstract idea like
   information display cannot be considered patentable under the manner for manufacture test

Question 3

Process for Obtaining a National Patent - filing and fees

Answer 3

 Fees/other: File at the patent office in Canberra or state sub office
 Obligation to file first with national office: No
 Excess claim fees: more than 20 claims (due on acceptance)
 Renewal Fees: A continuation fee is due on the 5th anniversary of filing with renewal fees due annually on
the anniversary of filing from the 5th year onwards (plus 6 month with payment of additional fee)

Question 4

Process for Obtaining a National Patent - search and exam

Answer 4

search and examination
 Search before grant: Yes
 Type of examination: formal and substantive examination
 Time limit to request exam: Within 5 years from filing date or within 2 months from invitation (for standard
applications)
 Multiply dependent claims allowed: Yes
 Prior Art Disclosure requirements: No (this was previously required though)
 Examination Process: Office issues a first exam report which sets a 12 month deadline to bring the
application into order for acceptance. This deadline cannot be extended.
 Applicant can file as many responses as necessary within this timeframe. There is no response deadline
other than the overall acceptance deadline.

Question 5

Process for Obtaining a National Patent - grant

Answer 5

 Application must be accepted within 12 months from first exam report.
 Once accepted, applicant has 3 months to pay acceptance fee and excess claim fees (and to file a divisional).
 After acceptance, claim scope can be amended but cannot be broadened.
 Once acceptance fee has been paid, the application will grant roughly 3-6 months from the notice of
acceptance.

Question 6

Process for Obtaining a National Patent - claiming priority

Answer 6

 No need to file certified copy of priority document unless requested to do so. Translation may be requested
before acceptance on within 3 months.

Question 7

National Phase Entry From a PCT Application - time limits and translation requirements

Answer 7

1. time limits (and any extensions of time) for national/regional phase entry and filing formal documents
 31 months. Actions due:
o file address for service
o pay national phase entry fee
2. translation requirements
 English on filing

Question 8

Utility Models / Other Patents – Innovation Patent

Answer 8

 It will no longer be possible to file innovation patent applications after 26 August 2021
 Term: 8 years
 What can be protected: Same as patent
 Available from PCT: Yes
 Conversion to/from patent: Standard patent applications may be converted to innovation patent applications
any time before acceptance and vice versa
 Examination: Maximum 5 claims
 No substantive examination prior to grant – grants in 4/6 weeks
 Must get patent ‘certified’ before bringing infringement action. Patentee cannot exert any rights unless the
patent has been examined and certified
 Requires ‘innovative step’ rather than inventive step. Lower threshold

Question 9

Miscellaneous

Answer 9

 Effective as of 25 September 2019 (Exam Man 2.10.3), divisional applications filed within 12 months of
disclosure can also claim a grace period.
 Effective as of 25 September 2019 (Exam Man 2.20.4.2), on entering the PCT national phase, certification of
verification of translation is not required unless requested by examiners, e.g., where the Commissioner has
reason to believe that the translation may not be true and correct.
 Effective of 27 February 2020, a ‘public interest’ test will replace the current ‘reasonable requirements of the
public’ test for compulsory licenses. Furthermore, only the patentee of a dependent patent will be able to
obtain a compulsory licence over the original patent.
 Effective of 27 February 2020, Crown use provisions for patents and designs can be invoked for the provision
of a service that any Commonwealth, State or Territory Government has the primary responsibility for
providing or funding. Governments will also be required to seek a negotiated outcome with the patentee
before invoking Crown use, except in the case of emergencies.
 Effective of 27 February 2020, Omnibus claims may be may be challenged post-acceptance and post-grant.
 Effective 27 February 2020, the Commissioner of Patents will have the power to redact sensitive information
from OPI documents.