Filing Requirements | Patents | Australia

Types of Applications

In Australia we have the following types of patent applications:

– Provisional Application | Filing Requirements |

– Complete Application for a Standard or Innovation Patent | Filing Requirements |

– Complete Application for a Standard or Innovation Patent Associated with a Provisional Application or Claiming Convention Priority from a Foreign Application | Filing Requirements |

– Complete Application by Way of Entering National Phase of a PCT Application | Filing Requirements |

– PCT Application | Filing Requirements |


Minimum Filing Requirements

The following information and documents are the minimum items that we require in order for us to prepare and file the relevant patent application.


Provisional Application

Applicants Details

The full legal name and address of each person, company or other legal entity in whose name the application is to be made.

Please provide the Australian company number (ACN), or the australian registered body number (ARBN), if relevant for any company that is an applicant.


In the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.


Please note the applicant does not have to be an inventor however in that case the applicant must have legal entitlement to the invention from the inventor (for example by assignment, by contract or by the operation of all the devolution of law) if the applicant is to be the owner.


Patent Specification and Drawings.

A copy of the specification in English including drawings, if any. The specification preferably in Microsoft word format and the drawings preferably in .dwg format or PDF format to facilitate reproduction, manipulation and electronic filing.


Guidelines

Alternatively sufficient detail about the invention for us to prepare these and in that case we refer you to the following guidelines:

– Please please provide a full description of how the invention works and is used including simple drawings which may help us understand the invention;

– If the description includes terms of the art please provide a brief explanation of the terms/jargon;

– Please provide a set of good quality drawings to accompany your full description (without borders, titles, dimensions or any text) presented on A4 paper and/or presented as an electronic copy for reproduction or further manipulation (preferably in a *.dwg format or PDF format);

– Please answer the following questions as best you can and while some of the information may be self-evident from the information you provide in your full description your answers may be of further assistance:

1. Why was the invention developed?

2. Is the invention a product/device or a method/process?

3. What prior art is the most similar to the invention? Please provide any references or pictures/drawings or any other information that you may have about the prior art.

4. Does the invention overcome specific problems with or in the prior art? If so what problem(s) does it overcome and what features in the invention provide that/those advantage(s)?

5. Does the invention provide other advantages over the prior art? If so, what feature(s) in the invention provide those other advantages?

6. In a sentence describe the technical field the invention belongs to? For example ‘the invention relates to a new method of making plastic pipes’ or ‘the invention relates to a paint additive to help the paint dry quicker when applied to a surface’.

7. Is the invention fully developed or some further development needs to be completed? If so please specify what further developments need to be completed or are likely to be undertaken.


Power of Attorney

An executed power of attorney is not required.


Complete Application for a Standard or Innovation Patent (No Previous Provisional Application)

Applicants Details

The full legal name and address of each person, company or other legal entity in whose name the application is to be made.

Please provide the Australian company number (ACN), or the australian registered body number (ARBN), if relevant for any company that is an applicant.


In the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.


Please note the applicant does not have to be an inventor however in that case the applicant must have legal entitlement to the invention from the inventor (for example by assignment, by contract or by the operation of all the devolution of law) if the applicant is to be the owner.


Inventors Details

The full name and address of each person (inventor) who contributed to the invention.

The inventors can only be people and not corporations.


Patent Specification , Claims, Abstract

A copy of the specification and claims in English including drawings, if any. Please note:

The Specification and Claims Preferably Are Provided in Microsoft Word Format and the Drawings Preferably in .Dwg Format or PDF Format to Facilitate Reproduction, Manipulation and Electronic Filing;

In the Case of an Innovation Patent the Maximum Number of Allowable Claims Is 5.


Alternatively provide us sufficient detail about the invention for us to prepare these and in that case we refer you to the previous guidelines provided in the provisional application filing requirements | GUIDELINES |


An abstract to accompany the specification. This can be filed shortly after filing the patent application if required however,a late fee generally applies if it is not filed at the same time.


Power of Attorney

An executed power of attorney is not required.


Complete Application for a Standard Patent Associated with a Provisional Application or Claiming Convention Priority

The same requirements as detailed for Complete Application for a Standard or Innovation Patent (No Previous Provisional Application) as provided above apply.


Time Limits

The time limit to file the application and claim priority from an eligible first application is +12 months from filing date of the first application.


Foreign Priority Documents and Translations

If applicable, a certified copy of the foreign priority document. This can can be filed shortly after filing the patent application however a late fee generally applies if it is not filed at the same time.


If applicable, a verified English translation of the priority document will only be required if requested by the patent office after filing.


Power of Attorney

An executed power of attorney is not required.


A Complete Application by Way of Entering National Phase of a PCT Application

Time Limits

The time limit to enter national phase of a PCT application under chapter I / chapter II is +31 months from the priority date.


Pct Details

A copy of the front page of the PCT application as published by WIPO however a copy of the entire application would be preferable.

Full details and particulars of any Article 19 and Article 34 amendments as applicable.


Translations

If the International application is not in English then a verified English translation of the international application is required to be filed with the request to enter national phase.


If any Article 19 and Article 34 amendments were made then these must be included in the translations including any article 19 statement if applicable.


Power of Attorney

An executed power of attorney is not required.


A PCT Application | an International Patent Application

The same requirements as detailed for Complete Application for a Standard or Innovation Patent (No Previous Provisional Application) as provided above taking into account the following eligibility criteria.


Eligibility to File

A PCT application can only be filed through the Australian patent office by Australian nationals or residents.

Non-Australian residents can file a PCT application through our office with the PCT international bureau however non-Australian resident applicants must be a resident or national of a PCT contracting State.


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Intellectual Property Lawyers \ Patent & Trade Mark Attorneys


King George Chambers, Suite 415, 375 George St. Sydney NSW 2000 Australia

T +61 2 9299 7731 F + 61 2 9299 3589 office@spco com. au www.spco.com.au skype spcoip ABN 91 028 892 863

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