Australia Patent Law
* The Patents Act of 1990
* The Patents Regulations of 1991
Australia is member of the following agreements and conventions
-Patent Cooperation Treaty (PCT)
-Patent Law Treaty (PLT)
Filing Requirements for Patent Applications in Australia
1. A copy of the specification (description,
claims, abstract of the disclosure, and drawings if any) in English, typed or printed with reasonable clarity.
2. The name and address of the applicant, together with the number(s), place(s), and date(s) of the basic application(s) if convention priority is claimed.
3. If it is not possible to transmit a specification and/or drawings in time, as a last resort, a Convention Application with a temporary specification which identifies the invention by reference to the particulars of the basic application can be filed.
4. A Simply signed Power of Attorney (POA).
Australia Patent Registration Procedure
The Australian Patent application is filed at The Commissioner Office of Patents of Australia (IP AUSTRALIA).
It is a formality check of the Australia patent application and it is examined and found to satisfy the requirements of the Patents Act.
Examination can be initiated at the request of the applicant by voluntary request within 5 years of the Australian filing, or within 6 months of the receipt of a direction to do so from the Commissioner of Patents, whichever first occurs.
Innovation Patent applications: the requirements for filing an application is the same as the requirements mentioned in points (1-5), but only 5 claims are permitted.
If any objections are raised you will have 12 months to overcome the objections. Once any objections raised by an examiner are overcome, the application will proceed to acceptance.
After acceptation of the patent, it will be published at the Australian Official Journal of Patents (AOJP) in the 18 months from priority date and again at acceptance.
Once the application is accepted there is a three month window for an interested party to oppose the grant of the application. Only a few patent applications are opposed each year and most proceed to grant after the three month period has expired. The application will proceed to grant if no opposition is filed.
If not obstacles are found, the patent grant resolution will be issued and then the certificate.
The registration process of a Patent in Australia can take from 2 to 3 years, approximately.
The type of patent you hold will determine the duration of your protection in Australia:
* A standard patent lasts for up to 20 years.
* Pharmaceutical patents can last up to 25 years.
* An innovation patent only lasts for up to 8 years.
- An innovation patent is a relatively quick and economical manner to protect an incremental advance on existing technology rather than a ground-breaking invention.
*Standard Patent (20 years)
Annuities fees for a standard patent or standard patent application are due annually from the fourth (4th) anniversary of the date of filing of the complete application. These fees are payable whether or not the patent is granted.
* Innovation Patent (8 years)
Annuities fees for an innovation patent are due annually from the second (2th) anniversary of the date of filing of the complete application date.
Priority claim can be made within 12 months after filing date of the earlier application.
National phase of PCT Applications
1. At least identifying particulars of the PCT application are required to proceed into the National Phase.
2. A certified English translation, if necessary, should also be provided before the deadline, 31 months after the priority date.
3. A certified English translation of the basic application may be requested by the Patent Office.
Australia Patent Reinstatement (Extensions of time in Australia)
* You may need to apply for an extension of time to restore a patent or patent application that has lapsed because you unintentionally failed to pay a fee or take some other action in time. For example, perhaps
you have lost your priority rights because you did not file a complete application within 12 months of your provisional application.
* Before being given an extension of time you must explain in a declaration the chain of events that caused the unintentional mistake, and pay any unpaid fees.
Australia Trademark Law
Legal basis is the Trade Marks Act 1995, in force since January 1, 1996.
Interpretation of the Trade Marks Act 1995 is based on the principles of "common law“, i.e. official and juridical decisions are rendered on the basis of prior decisions and judgements on similar cases comparing all facts and merits of a case and taking into consideration all different common grounds. The proof of infringement, however, is easier than in other “common law states”.
Australia is a member of the Madrid Protocol.
Trademark protection is obtained by registration. Non-registered trademarks can also be enforced under the Competition and Consumer Act 2010 or the "common law" tort of passing off if they have sufficient public recognition. Enforcing a registered trademark is easier than enforcing an unregistered "common law" trademark, as the owner does not have to establish the public reputation of the trade mark or any misrepresentation.
Australian trademarks are also protected on Christmas Island, the Cocos (Keeling) Islands and Norfolk Islands (NF).
Australia is member of the followings organizations and agreements
* Nice Agreement
* Berne Convention
* Paris Convention
* Singapore Treaty on the Law of Trademarks
* Protocol Relating to the Madrid Agreement
* Patent Law Treaty (PLT)
* Budapest Treaty
* Patent Cooperation Treaty
* Strasbourg Agreement
Nice classification, 11th edition. Multiple-class applications are possible. However, additional fees are payable if an application is to cover more than 1 class.
A Simply signed Power of Attorney (POA) is sufficient.
Australia Trademark Registration Procedure
The application is filed at the Australian Government Agency responsible for administering patents, trademarks, designs and plant breeder's rights (IP Australia).
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. If an examiner refuses to allow the registration of a trademark, the applicant will have an opportunity to respond to the examiner's report by providing submissions or evidence or both, as appropriate. For example, signs not deemed distinctive in the examination may be registered if the applicant can demonstrate that distinctiveness has been acquired by use. The applicant may apply for an ex parte hearing to be heard on the issues raised by the examiner during the examination process. As a means of last resort, there is also an appeal to the Federal Court.
If accepted for registration, the trademark application is published in the “Australian Official Journal of Trade Marks”.
If an opposition is filed, a notice of intention to defend must be filed within 1 month of receiving the statement of grounds on which the trademark is being opposed.
If no opposition is filed, the trademark will be registered following the payment of registration fees.
Then the Official Australia Trademark Registration Certificate is issued.
National Opposition Period
The opposition period is 2 months after publication for acceptance in the "Australian Official Journal of Trade Marks".
The processing time in Australia from first filing to registration is approximately 7 to 24 months. The first office action is taken after approximately 6 to 7 months.
An expedited examination can be requested if the processing time is likely to cause serious disadvantage to the applicant. Expedited examinations will occur in 2 to 3 months. Applications filed claiming convention priority will generally have their examination automatically expedited.
A trademark registration in Australia is valid for 10 years from the date of application. The registration is renewable for periods of 10 years upon the payment of relevant renewal fees. Trademarks may be renewed for consecutive periods of ten years within 12 months before the expiry of the validity term. Late payment is possible within a six-month grace period by paying a corresponding surcharge for each lapsed month or part thereof.
Convention priority is to be claimed on filing the application or within two days thereof. A certified copy of the Priority Document may be required during examination; and an English translation of the document (if in another language) with a certificate of verification relating to the translation.
Opposition process of Trademark in Australia
To oppose the registration of a trademark, a notice of intention to oppose must be filed within the opposition period. Subsequently, and within 1 month of filing the notice of intention to oppose, a statement of grounds and particulars must be filed specifying the grounds on which the trademark is being opposed.
Remarks about the trademark registration process in Australia
Filing of the application in Australia
Once the trademark application is filed then will be an formality check to ensure that all of the requirements to fulfil a trademark application under the Australian Trade Marks Act 1995 have been provided.
Once the application complies with the formality requirements, an examiner of the trade mark office is then assigned to your application to check if it is acceptable on absolute and relative grounds.
* If the examiner discovers an issue under any one of the grounds established in the Australian Trade Marks Act 1995 an official notice of rejection is issued and the applicant has an opportunity to respond to the refusal.
If the application is not rejected on absolute or relative grounds it passes to acceptance where it will be advertised in the Australian Trade Mark Journal for 2 months, where third parties may oppose the registration of the mark via an opposition proceeding.
If there is not opposition is filed the trademark will be registered and an official certificate is issued. There are no official registration fees for trademarks in Australia.
Use of Trademark in Australia
If a trademark in Australia has not been used within a continuous period of 3 years since registration, the registration may be cancelled on the basis of a third party’s request filed not earlier than 3 years from the filing date.
Provisional Refusal of trademark in Australia
* The response to a provisional refusal of an international trademark registration can be filed within 15 months from the date of issuance of the refusal by IP Australia. Extension of the time for response can be requested within the first 21 months from the first provisional refusal by the filing of a written request and by the filing of a declaration if beyond 21 months from the date of the first provisional refusal. The response must be filed in the English language.
* A hearing or a decision on the written record, relating to the examination, may be requested at any stage during the examination so long as it occurs within 15 months from the date of the first provisional refusal.