AUSTRALIA

• INTERNATIONAL TREATIES TO WHICH AUSTRALIA IS SIGNATORY

  • International Treaties to which Australia is signatory:

    • Paris Convention for the protection of industrial property
    • Patent Co-operation Treaty – PCT.
    • Agreement on Trade Related Aspects of Intellectual Property Rights –TRIPS.
    • Budapest Treaty On The International Recognition of the Deposit of Micro Organisms For The Purposes of Patent Procedure.
    • Strasbourg Agreement Concerning the International Patent Classification
• PATENT LEGISLATION IN AUSTRALIA

  • IP LAW IN AUSTRALIA

    The Australian legal system is based on the Common Law system. Patents in Australia are governed by:

    The Patents (Amendment Act) 1990. Patents are granted by the Australian Intellectual Property Office.

• BASICS REGARDING PATENTABILITY OF INVENTIONS IN AUSTRALIA

  • Please note: Patents are of the following categories in Australia:

    Standard patents (granted patents) with a term of 20 years.

    Pharmaceutical patents with a term of 25 years.

    Innovation patents (certified patents) with a term of 8 years. Inventions may relate to products, processes or industrial applications.

    Patents are therefore granted to inventions that:

    • Are New or Novel
    • Involve an inventive step
    • Comprise of a process or an Industrial application of the invention.

    For an Invention to be patentable, it should contain the following:

    (i). Novelty: An invention is considered new or novel if it is not included in the state of the art. State of the art consists of all the information available and accessible to the public prior to the date of filing for the patent application nationally or internationally by means of its description, use or any other method by which it may be known or utilised by experts in the field.

    (ii). Inventive Step: is, given the prevailing state of the art, it is not obvious to an expert in that field. An invention is considered ‘obvious’ when it is within the grasp of a skilled person in that field of expertise & therefore to be expected from him.

    (iii). Industrial Application: of the invention would be ‘when the object of the invention may be produced, manufactured or used in any kind of industry including agriculture’

• INVENTIONS NOT PATENTABLE IN AUSTRALIA

  • Inventions pertaining to the following:

    • Discoveries, Scientific Theories & Mathematical methods.
    • Aesthetic creations.
    • Substances already existing in nature and nuclear materials.
    • Charts
    • Schemes, Rules, Methods for performing mental acts, playing games, doing business as well as Presentation of Information.
    • Programmes for Computers.
    • Inventions contrary to public order & morals.
    • Methods of treatment by surgery or therapy on humans and animals.
    • Prejudicial to the Interest or Security of the Nation.

    PartityPatents through it’s associate Law Firms in Australia, is at hand to help you with patent registration and prosecution.

• FILING REQUIREMENTS OF PATENTS IN AUSTRALIA
  • • Name & Address of the applicant.
    • Name & Address of the Inventor.
    • Specification comprising a description claims & drawings if any.
    • Priority Data if any.
    • State of incorporation / nationality of the Applicant.
    • Abstract of the Invention.
    • Indications serving to identify the identity of the inventor(s) as well as the Solicitor.
    • Request for examination of the patent.
    • If the patent application relates to a micro-organism or a process in which a micro-organism is used, it is necessary to include a certificate of deposit of the micro-organism with an officially recognised national depositary institution designated by the Government.
• EXAMINATION OF THE PATENT APPLICATION IN AUSTRALIA
  • • Once the application is filed, the application is scrutinised for defence & security aspects.
    • Innovation patents are examined to check compliance with all formality requisites and then published in the official journal.
    • Examination of innovation patents is optional. However patents cannot be legally enforced until certified by way of examination.
    • Examination may be requested by third parties seeking clarification of applicant’s legal rights.
    • Application meeting all requisites is certified and published in the IP journal to which interested third parties may file opposition.
    • No objections / opposition forthcoming, application registered and innovation patent granted.
    • Standard Patents are also examined for formality compliances and published at 18 months in the official journal.
    • Applicant to request substantive examination else, patent application deemed abandoned.
    • Post examination, any objections to be addressed accordingly by the applicant.
    • Patent application is again published in the journal to which interested third parties may file opposition.
    • In the event no objections / opposition forthcoming, application is registered and standard patent granted.
• RIGHTS OF THE PATENTEE IN AUSTRALIA

  • TERM AND KINDS OF PATENTS GRANTED IN AUSTRALIA:

    Standard patents (granted patents) with a term of 20 years.

    Pharmaceutical patents with a term of 25 years.

    Innovation patents (certified patents) with a term of 8 years.

    PATENTEE RIGHTS

    • Patents confer on its holders and successors an exclusive right to work the invention.
    •  Patentee may authorise such uses of the patent through a contractual agreement with interested parties as to import, rent out, deliver or sell the product patent .
    •  Patentee may authorise the working of the patent either by a manufacturer or by an importer.
    • Patentee may even assign, lease or licence the patent.
    • Patentee is entitled to take legal action against infringers.
• COMPULSORY LICENCES OF PATENTS IN AUSTRALIA

  • Compulsory Licenses may only be granted to certified innovation patents at the end of the prescribed period when:

    • Applicant has tried several times, but unsuccessful in obtaining authorisation from the patentee to work the patent on reasonable terms and conditions.
    • Reasonable requirements of the public are not met.
    • Patentee fails to work the patent and offers no tenable reasons for the same
    • Patentee in contravention of competition and consumer acts.
    • Patented invention cannot be worked without infringing prior patents.
    • National emergencies and public health are at stake.

    ParityPatents along with specialised Patent Lawyers and Patent Attorneys in Australia, can assist you comprehensively with Compulsory Licence matters.

• PATENTS Cost of Registration in AUSTRALIA