Australia

PCT National Phase application

The deadline for filing a national phase application in Australia from an international PCT application is 31 months from the priority date of the earliest basic application.

In order to proceed, we require:

  • The PCT application details. It is preferred that you also provide us with a full copy of the published PCT specification, however we are able to obtain this ourselves once we have the PCT application details.
  • A verified English translation of the patent specification if the specification is not in English. This should include a translation of any amendments made during the International Phase (if any).

After filing, we require:

  • Details on how the Applicant derives entitlement from the inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the basic application. This will allow us to complete a Notice of Entitlement document, which must be filed when we request examination.

Where relevant, please also supply the details of any changes to the Applicant or Inventor details recorded before WIPO.

Convention application

An Australian complete application can be filed with a convention claim within the 12 month convention period.

In order to proceed, we require:

  • A English language patent specification including drawings (if any);
  • Full name and address of the Applicants;
  • The full name of each of the Inventors;
  • Full details of the priority application, including country, application number, filing date and Applicant details.

As with a PCT application, after filing, we require:

  • Details on how the Applicant derives entitlement from the inventors and how the Applicant derives entitlement to claim priority from the priority application. This will allow us to complete the Notice of Entitlement document for filing when we request examination.

Request for examination

An Australian patent application is not automatically examined and we must request examination.  We can do this voluntarily at any time, including at filing, but we must do so within two months from receiving a Direction from the Commissioner of IP Australia, or within 5 years from the filing date, whichever is earlier.

Innovation patent applications

Australia does allow the filing of an Innovation patent application as an alternative to filing a standard application.  An Innovation patent provides fast protection that may be useful if you are looking for a granted patent early or have a product with a short market life.

An Innovation patent only has a term for eight years. If you wish the patent to be examined and certified, the patent may only include five claims.

To file an Innovation patent, all we require is:

  • An English language specification including drawings (if any)
  • Full name and address of the Applicants;
  • The full name of each of the Inventors;
  • Full details of the priority application (if priority is to be claimed) including country, application number, filing date and Applicant details.

After examination for formalities, an Innovation patent will proceed to grant.  This is generally achieved within a month after filing.  The granted patent is not however enforceable unless you request for the patent to be examined and it is certified.  You may request for the patent to be examined at any time after grant.

As with both a PCT National Phase and a Convention application, a Notice of Entitlement document must be filed.  It is required to be filed to complete formality requirements.  Therefore we do need details on how the Applicant derives entitlement from the Inventors, and how it derives entitlement to claim priority, if relevant, at the time that we file the application or shortly thereafter.

Certified copy of priority application not usually required

A certified copy of the priority application and verified translation thereof (if not in English) is not required at the time of filing when filing either a PCT National Phase, a Convention application or an Innovation patent application.  It may however be requested by IP Australia during examination.

Powers of Attorney

No forms (Powers of Attorney, declaration, assignment or similar) signed by the Applicant or Inventors are required to be filed with IP Australia.

New Zealand

PCT National Phase application

The deadline for filing a National Phase application in New Zealand from an International PCT application is 31 months from the priority date of the earliest basic application.

In order to proceed, we require:

  • PCT application details, preferably a full copy of the published PCT specification.

After filing, we require:

  • a verified English translation of the patent specification and any amendments made during the International Phase where the specification is not in English. This must be filed within three months of the National Phase entry date.
  • details on how the Applicant derives entitlement from the Inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the basic application (same Applicant, assignment or other arrangement/ agreement). Entitlement details must be filed before the application is accepted.

Where relevant, please also supply the details of any changes to the Applicant or Inventor details recorded before WIPO.

A certified copy of the basic application and verified translation thereof (if not in English) is not required at the time of filing. This may be required by the Intellectual Property Office of New Zealand (IPONZ) on request.

Convention application

A New Zealand complete application can be filed with a Convention claim within the relevant 12 month convention priority period.

In order to proceed, we require:

  • an English language patent specification including drawings (if any)
  • full contact details and nationality of the Applicant
  • full name, address and nationality of each of the inventors
  • full details of the priority application, including country, application number, filing date, Applicant details and title.

After filing, we require:

  • details on how the Applicant derives entitlement from the Inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the priority application (same Applicant, assignment or other arrangement/ agreement). Entitlement details must be filed before the application is accepted.

A certified copy of the priority application and verified translation thereof (if not in English) is not required at the time of filing. This may be required by the IPONZ on request.

Request for examination

A filed NZ patent application is not automatically examined. Examination can be voluntarily requested at any time, including at filing, but must be requested the earliest of five years from the earliest complete filing date or within two months from Direction period for requesting examination issuing from IPONZ. Failure to file an examination request within two months of a Direction results in the application being treated as abandoned.

For divisional applications, the five year period commences on the filing date of the first filed relative (parent, grandparent, etc). This effectively limits filing of divisional applications to five years from the filing date of the first filed relative, because there is no provision for extending that five year period.

Powers of Attorney

No forms (Powers of Attorney, declaration, assignment or similar) signed by the Applicant are required to be filed with IPONZ at the time of filing. However, an authorisation of agent form executed by the Applicant is required for any changes to the Applicant details, including address changes.

Papua New Guinea

PCT National Phase application

The deadline for filing a national phase application in Papua New Guinea from an international PCT application is 31 months from the priority date of the earliest basic application.

In order to proceed, we require:

  • PCT application details, preferably a full copy of the published PCT specification.
  • An English translation of the patent specification where the specification is not in English and any amendments made during the international phase;

After filing, we require:

  • A verification certificate of the English translation where the specification is not in English;
  • Power of Attorney and the Statement Justifying the Applicant’s Right;
  • Details on how the Applicant derives entitlement from the inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the basic application (same Applicant, assignment or other arrangement/ agreement). Entitlement details must be filed before the application is accepted.

Where relevant, please also supply the details of any changes to the Applicant or Inventor details recorded before WIPO.

A certified copy of the basic application and verified translation thereof (if not in English) is not required at the time of filing and is necessary on official request.

Convention application

A Papua New Guinea complete application can be filed with a convention claim within the relevant 12 month convention priority period.

In order to proceed, we require:

  • An English language patent specification including drawings where the specification is not in English;
  • Full contact details and nationality of the applicant;
  • Full name, address and nationality of each of the inventors;
  • Full details of the priority application, including country, application number, filing date, Applicant details, title;

After filing, we require:

  • A verification certificate of the English translation where the specification is not in English;
  • Power of Attorney and the Statement Justifying the Applicant’s Right;
  • Details on how the Applicant derives entitlement from the inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the priority application (same Applicant, assignment or other arrangement/ agreement). Entitlement details must be filed before the application is accepted.

A certified copy of the priority application and verified translation thereof (if not in English) is required after filing.

Request for examination

A filed Papua New Guinea patent application is not automatically examined. Examination can be based on the Preliminary Examination Report on Patentability under the PCT process, on corresponding applications in other selected countries or be undertaken by the Australian Patent Office (IP Australia).  The Papua New Guinea allows the Applicant to choose under which of these options an application is to proceed.  Examination may be requested at any time, including at filing, but must be requested within six months from a Direction issuing from the Papua New Guinea Patent Office.  Failure to file an examination request within six months of a Direction results in the application being treated as abandoned.

Who to contact

BEng FIPTA

Following graduation, Andrew gained two years’ industrial experience as an engineer in the packaging industry, before commencing with Phillips Ormonde Fitzpatrick in 1989. He is the firm’s engineering team leader and has over 25 years’ intellectual property (IP) experience in the mechanical and civil engineering fields.

To find out more, please contact Andrew at andrew.massie@pof.com.au