Patent Novelty in Australia
- Australia is an absolute novelty (first-to-file) country. This means that publication or public use of the invention anywhere in the world before the priority date will invalidate any patent to the invention.
- Australia does have a twelve month grace period beginning from the date of a non-confidential disclosure. However, a complete Australian patent application (e.g. a PCT patent application designating Australia) must be filed before the expiration of the twelve month grace period. The filing of a declaration is not required in order to take advantage of the grace period. There are some other limitations with respect to the Australian patent grace period so please contact us if you want our view on a specific scenario.
Inventive Step In Australia (Obviousness)
- The test for inventive step in Australia is whether the invention would have been obvious to a person skilled in the relevant art in light of the common general knowledge as it existed in Australia before the priority date of the relevant claim and one or more pieces of prior art information.
- One unique requirement under Australian patent law is that for prior art to be able to be considered for the purpose of assessing inventive step, it must be “ascertained, understood and regarded as relevant” by the PSA.
- In a recent revision to the Australian patent examination criteria in 2010, the ‘obvious to try’ question can be asked when assessing Inventive Step. That it, “would the PSA directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?”
- Inventive step objections raised during the examination process can often be overcome by intelligent argument.
Australian Patent Examination
Patent applicants must request Australian patent examination within five years of the patent application date (international filing date for national phase entries of PCT applications) although patent applicants can request examination voluntarily at any time. In Australia, a Direction to Request Examination is normally issued between 6 and 30 months after the Australian national phase entry date (filing date for the relevant national phase patent application). Examination must then be requested within 6 months of the date of the Direction.
It is also possible to request modified examination where a corresponding patent application has been granted in USA, Canada or New Zealand or in any of the countries signatory to the European Patent Convention. A certified copy of the corresponding patent application needs to be filed and the patent specification of the Australian national phase entry needs to be modified such that it conforms to the corresponding foreign patent application.
Patent Amendments in Australia
Prior to Acceptance
Voluntary amendments may be filed once national phase has been entered in Australia. Amendments must not result in matter being claimed that was not disclosed at the filing date of the patent application (e.g. PCT patent application filing date).
Voluntary amendments may be filed after the patent application has been accepted. However, such amendments must fall within the scope of the patent claims as accepted.
Australian Patent Renewals
Annual continuation fees are payable on a standard patent application in Australia, commencing on the fifth anniversary of the PCT patent application filing date or the Australian standard application filing date (as relevant). Once granted, annual continuation fees are payable for the life of the patent. The maximum term of a standard Australian patent is 20 years. However, a 5 year extension may be granted for pharmaceutical patent applications.