If you develop a new device, substance, method, or process, you may want to file for patents that
will give you rights to the new device in Australia. The first step of the patent process for Australian
inventors or companies in getting a patent is usually filing a provisional application with IP
Australia.
IP Australia provides an opportunity to file a provisional patent application. The next step to
obtain patent protection in Australia is to file the full application with IP Australia within 12
months from submitting a provisional. To claim prior art on the basis of the provisional and
obtain patent protection, the full standard or innovation application needs to be filed within 12
months after submitting the provisional.
To retain a date of priority and have continued effectiveness, the completed patent application
that is linked to a provisional patent application must be filed before the end of the twelve-month
period. For standard patent applications, applicants are required to apply for an examination and
pay an examination fee within 5 years of filing an application, or within 2 months of receiving an
instruction from the IP Australia Commissioner, whichever is earlier. The extension/renewal fees
for innovation patents are payable each year on the second anniversary of the filing date for the
completed application.
An innovation patent is not subjected to substantial examination before it is granted, so grants are
typically made within 1 month after the date of filing. A completed application is required in
order to have the patent effectively granted.
Typically, if the examination is successful, an application is either accepted or granted, and then the
a patent is granted based on the application.
After the opposition, the period has expired, and if there are no pending opposition proceedings, the
application proceeds to grant and issuance of a patent. A Divisional Patent Application may be
filed at any time prior to the grant of the Parent Application, but not more than 3 months after notification
of acceptance of the Parent Application. Unlike Canadian law, if a third party uses the invention
during a 1 year grace period prior to filing the patent application, the third party retains their
right to use the invention even after granting the patent to the inventor.
Australia allows for a 1-year grace period for inventors to file patents on standards or
innovations. A completed Australian application may be for either standard or innovation
patents. You can protect the products, processes, or inventions that you develop by applying for a
patent.
Once you file the first patent application, make, use, and sell your idea or invention (etc)
does not impact your rights to a patent. Inventions with relatively short commercial lives, those
with a small, but commercially meaningful, improvement over existing products, or those
involving a novel step are eligible inventions for a Patent Application for Innovation. Australia,
similar to Canada, has a first-to-file patent system, in which patents are granted to the first person
who files a patent application for the invention. Canadian applicants may take advantage of the global patent prosecution highway to expedite the review process of relevant patent applications
filed in Australia. It will be interesting to see what Australian and New Zealand patent applicants
think about the unified examination process.
The proposed integrated patent system is being implemented in stages, starting with the work-
sharing between the two patent offices, moving on to a unified applications portal, and
eventually to a unified examination process. The integrated patent system could provide users
only cost savings where it is cheaper to file and/or prosecute Australian and New Zealand
applications together rather than handling the same cases separately, as is current practice. A
unified application process would probably save, at best, maybe 10 minutes of patent admin
time, unlikely to lower filing costs significantly.
Patent lawyers in New Zealand regularly simultaneously file domestic-stage applications in
Australia and New Zealand, just like Australian patent lawyers. The substantive patent laws in
each country would remain separate, so IP Australia and IPONZ would each have to train two
patent examiners in applying each other’s laws, including related case law.
The examiners will apply the laws of the respective countries for each application. Once an
the examination is requested, IP Australia will examine the application to ensure it meets the
requirements of the Patents Act 1990, including requirements that the invention is novel, useful,
and involves an inventive step. With an international preliminary examination, patentability can
be assessed on the invention described and claims, and, where it is found advantageous,
amended, before an application proceeds to the domestic stage.
If one wishes to pursue patent protection abroad, either the full specification in each country, or
the patent cooperation treaty (PCT) application to the World Intellectual Property Organization
(WIPO), should be filed within 12 months from the filing date of the first patent application to
protect the invention. Generally, patent applicants wishing to protect their inventions in more
than one country typically first files a domestic or regional patent application at the patent office
of the home or regional patent office, and within 12 months from the date that this first
application is filed (the time limit established by the Paris Convention), they file an international
an application under the PCT. In most cases, you have an additional 18 months from the filing date
of your international patent application (or typically 30 months from the filing date of the
an original patent application that you claimed priority over before you must start the domestic
phasing process with individual patent offices and meet domestic requirements.
