PATENT FILING IN AUSTRALIA

We are heading towards an era of technological boom where rise in inventions is taking place exponentially. An enforceable Patent is the key to effective Commercialization/Out-Licensing of any technology. In Australia, out of all the patent applications, approximately 20 percent of patents are being granted and approximately 35 percent lapsing without grant from 2000 to 2014. The remaining applications are pending, which is due to the time it takes from entering national phase in a country till the completion of prosecution. This can take up to five years. While filing of patents, it is essential to have the things correct in one go to save time and any additional cost. GPF along with Khurana and Khurana, Advocates and IP Attorneys (K&K) has tremendous experience in dealing with Patent Filing/Prosecution as per Australian Patent Laws, and can assist you in filing the patents in an efficient and hassle free manner.

 

High Level Cost Estimate for Filing
Description
Price
Official Fee
$ 370
Attorney Fee
$ 850
Translation Fee
NA
Total
$ 1220

Documents Required
  • Ownership and inventor details (including postal address)
  • Contact details of an Australian or New Zealand agent
  • Prepared specification that describes your invention in detail, formatted in line with our guidelines
  • Payment details.
Filing to Grant Procedure
1
STEP 1 : Filing the Application

A patent application must be filed by an eligible person (the inventor or assignee) in the prescribed form:

 

  • It must include a specification detailing the invention and the claims that define its legal protection.

  • Applicants may file a provisional application (description only) followed within 12 months by a complete application (full description, claims, and abstract).

  • A complete application may also enter via the PCT (Patent Cooperation Treaty) route.

2
STEP 2 : Divisional Applications

  • If an application claims more than one invention, the applicant may file a divisional application for the additional subject matter.

  • Divisional applications retain the priority date of the original application./strong>

  • Although there are concerns about potential misuse, no legislative limits currently exist on divisional filings.

3
STEP 3 : Examination Process

  • Examination is not automatic; the applicant must request examination within 5 years of filing.

  • IP Australia typically issues a direction to request examination at around 32 months from the priority date.

  • The application is reviewed for compliance with patentability requirements (novelty, inventive step, etc.), and prior art is assessed.

4
STEP 4 : Examination Reports and Prosecution

  • If issues arise, the examiner issues a first report. The applicant has 21 months to overcome objections.

  • The process may involve multiple exchanges (called prosecution) between the applicant and examiner.

  • If unresolved, the application lapses after the 21-month period.

5
STEP 5 : Acceptance, Publication & Grant

  • If accepted, the application is published in the Official Journal of Patents.

  • The complete specification is typically published 18 months after the priority date.

  • If unopposed, the patent is granted and sealed within six months of acceptance publication.