IP Australia
- Q1 Filing Date
- Q2 Representation
- Q3 Forms and Means of Communications
- Q4 Relief in Respect of Time Limits
- Q5 Reinstatement of Rights
- Q6 Restoration of Priority Rights Where the Filing of the Subsequent Application was Delayed
- Q7 Restoration of Priority Rights Where the Filing of a Copy of the Earlier Application was Delayed
- Q8 Request for Recordation of Change in Name or Address
- Q9 Request for Recordation of Change in Applicant or Owner
- Q10 Request for Recordation of a License or a Security Interest
- Q11 Request for Correction of a Mistake
Q1: Filing date
Q1-1 For the purpose of obtaining a filing date, an applicant may file an application on paper or “as otherwise permitted by the Office”. If your Office accepts applications filed in a form or by a means other than on paper, for the purpose of the filing date (for example, on-line filing), please provide a brief explanation regarding the acceptable form or means, and describe whether such form or means, for the purpose of the filing date, are different from the form or means applicable to applications accepted by your Office for the purpose of processing the application after according the filing date.
[Reference: PLT Article 5(1)(a)]
A1-1 IP Australia does accept patent applications filed in a form or by a means other than on paper for the purpose of obtaining a filing date. IP Australia’s website has an online filing service for submitting applications. Applicants have a choice. They can submit applications using the PCT Safe packager, or can use IP Australia’s web forms for typing in text or uploading files. The IP Australia online services web pages have current details of the acceptable file formats.
This online service enables filing of patent applications to obtain a priority date.
After a filing date has been obtained, IP Australia accepts online filing of further bibliographic information, claims, and drawings for the purpose of processing the application.
The applicant can also file online requests for examination, amendment and general correspondence.
Q1-2 Does your Office accept a drawing as the element referred to as “a part which on the face of it appears to be a description” in PLT Article 5(1)(a)(iii)?
[Reference: PLT Article 5(1)(b)]
A1-2 Yes
Q1-3 For the purpose of according the filing date, a Contracting Party may require information allowing the identity of the applicant to be established or information allowing the applicant to be contacted by the Office, or the both. What is the requirement of your country?
(a) Information allowing the identity of the applicant to be established
(b) Information allowing the applicant to be contacted by the Office
(c) Both information allowing the identity of the applicant to be established and information allowing the applicant to be contacted by the Office.
[Reference: PLT Article 5(1)(c)]
A1-3 Information allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office. In Australia, either information is sufficient.
Q1-4 Does your Office accept evidence allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office as the element referred to in PLT Article 5(1)(a)(ii) (“indications allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office”)?
[Reference: PLT Article 5(1)(c)]
A1-4 Yes
Q1-5 For the filing date to be determined under PLT Article 5(6)(b), which of the optional elements referred to in PLT Rule 2(4) are required by your Office?
(a) A copy of the earlier application
(b) A copy of the earlier application and its filing date, certified as correct
(c) A translation of the earlier application
(d) The missing part of the description or missing drawing must be completely contained in the earlier application
(e) The application must contain an indication that the contents of the earlier application were incorporated by reference
(f) An indication as to where the missing part of the description or the missing drawing is contained in the earlier application or in the translation.
[Reference: PLT Rule 2(4)]
A1-5 - A copy of the earlier application
- A translation of the earlier application
- The missing part of the description or missing drawing must be completely contained in the earlier application
- An indication as to where the missing part of the description or the missing drawing is contained in the earlier application or in the translation.
Q1-6 For a reference to a previously filed application to replace the description and any drawing for the purpose of the filing date under PLT Article 5(7), which of the requirements referred to in PLT Rule 2(5) are required by your Office?
(a) The reference to a previously filed application must indicate the filing date of the previously filed application
(b) A copy of the previously filed application
(c) A copy of the previously filed application, certified as correct
(d) A translation of the previously filed application
(e) The reference mentioned in PLT Article 5(7)(a) shall be to a previously filed application that has been filed by the applicant or his predecessor or successor in title
[Reference: PLT Rule 2(5)]
A1-6 None of the above.
Q2: Representation
Q2-1 In addition to the procedures referred to in PLT Article 7(2)(a) and (b), are there any procedures before the Office that an applicant, owner or other interested person may carry out himself without, for example, a local representative? If yes, please list those procedures.
[Reference: PLT Article 7(2)]
A2-1 All
Q2-2 Where a single power of attorney relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single power of attorney be filed for each application and patent?
[Reference: PLT Rule 7(2)(b)]
A2-2 No
Q3: Forms and Means of Communications
Q3-1 Does your Office permit the filing of communications by telegraph, teleprinter, telefacsimile or other similar means of transmittal? If yes, does your Office require that the original of such communication, accompanied by a letter identifying the earlier transmission, be filed on paper?
(a) The filing of communications by telegraph, teleprinter, telefacsimile, etc. is not permitted
(b) The filing of communications by telegraph, teleprinter, telefacsimile, etc. is permitted, and the original of the communications by telegraph, teleprinter, telefacsimile, etc. is required
(c) The filing of communications by telegraph, teleprinter, telefacsimile, etc. is permitted, and the original of the communications by telegraph, teleprinter, telefacsimile, etc. is not required
[Reference: PLT Rule 8(2)(c)]
A3-1 The filing of communications by telegraph, teleprinter, telefacsimile etc. is permitted, and the original of the communications by telegraph, teleprinter, telefacsimile, etc. is not required.
Q4: Relief in Respect of Time Limits
Q4-1 Which form of relief in respect of time limits does your Office provide?
[Reference: PLT Article 11(1), (2) and (4)]
Note that the following are in addition to the broad extension provisions under s.223(2) of the Australian Patents Act 1990.
A4-1 Extension of time limits requested after the expiration of the time limit
Period of extension: 2 months after the circumstances preventing action cease to exist
Time limit to comply with the unfulfilled requirement: 12 months
Amount of fee: AUD 100 per month or part of a month
Q4-2 Which actions are excluded from the relief as described in A4-1?
[Reference: PLT Article 11(3) and Rule 12(5)]
A4-2 The actions described in PLT Rule 12(5)(v) and (vi)(ie. relief in respect of a time limit for an action before a board of appeal or other review body constituted in the framework of the Office, and relief in respect of a time limit for an action in inter partes proceedings).
Q5: Reinstatement of Rights
Q5-1 Under which circumstance does your Office reinstate the rights of the applicant or owner as referred to in PLT Article 12? In addition, please provide a brief explanation of the applicable standard.
[Reference: PLT Article 12(1)]
A5-1 Failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken.
Q5-2What is the time limit for making a request for reinstatement of rights?
[Reference: PLT Rule 13(2)]
A5-2 2 months after the circumstances preventing action cease to exist
Q5-3 Does your Office require a fee to be paid? If yes, please indicate the amount.
[Reference: PLT Article 12(3)]
A5-3 Yes Amount: AUD 100 per month or part of a month
Q5-4 Which actions are excluded from the reinstatement of rights?
[Reference: PLT Article 12(2) and Rule 13(3)]
A5-4 The actions described in PLT Rule 13(3)(i) and (iv) (ie. an action before a board of appeal or other review body constituted in the framework of the Office, and an action in inter partes proceedings).
Q6: Restoration of Priority Rights Where the Filing of the Subsequent Application was Delayed
Q6-1 Under which circumstance does your Office restore the right of priority where the subsequent application was not filed within the priority period?
[Reference: PLT Article 13(2)]
A6-1 Failure to file the subsequent application within the priority period occurred in spite of due care required by the circumstances having been taken.
Q6-2 In order to restore the right of priority, what is the time limit within which the subsequent application shall be filed?
[Reference: PLT Rule 14(4)]
A6-2 12 months
Q6-3 Does your Office require a fee to be paid? If yes, please indicate the amount.
[Reference: PLT Article 13(4)]
A6-3 AUD 100 per month or part of a month
Q7: Restoration of Priority Rights Where the Filing of a Copy of the Earlier Application was Delayed
Q7-1 In order to restore the right of priority where a copy of the earlier application was not filed within the time limit, does your Office require a declaration or other evidence in support of the request for restoration of priority rights?
[Reference: PLT Article 13(3) and Rule 14(6)(b)]
A7-1 Yes
Q7-2 Where the filing date of a copy of the earlier application was delayed (for example, a copy of the earlier application has not been filed within 16 months from the priority date), in order to enjoy restoration of priority right, what is the time limit within which such delayed copy of the earlier application shall be filed?
[Reference: PLT Rule 14(6)(b)]
A7-2 12 months
Q7-3 Does your Office require a fee to be paid? If yes, please indicate the amount.
[Reference: PLT Article 13(4)]
A7-3 AUD 100 per month or part of a month
Q8: Request for Recordation of Change in Name or Address
Q8-1 Where a single request for recordation of change in name or address relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 15(3)(b)]
A8-1 No
Q9: Request for Recordation of Change in Applicant or Owner
Q9-1 Does your Office require the following elements to be contained in the request for recordation of change in applicant or owner?
(a) A statement that the information contained in the request is true and correct
(b) Information relating to any government interest
[Reference: PLT Rule 16(1)(b)]
A9-1 No
Q9-2 Which documentation relating to the basis of the change is required by your Office under the following circumstances?
[Reference: PLT Rule 16(2)(a) to (c)]
The Office will require this only if requested by the new applicant or owner.
A9-2
The change results from a contract: Copy of contract of assignment.
The change results from a merger or from the reorganization or division of a legal entity:
Copy of document (e.g. merger contract)
The change results from any other ground (ex. by operation of law or a court decision):
Copy of court order
Q9-3 Where the change in applicant or owner is in the person of one or more but not all of several co-applicants or co-owners, does your Office require that evidence of the consent of the other co-applicants or co-owner to the change be provided to the Office?
[Reference: Rule 16(2)(d)]
A9-3 Yes
Q9-4 Where a single request for recordation of change in applicant or owner relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 16(5)]
A9-4 No
Q10: Request for Recordation of a License or a Security Interest
Q10-1 May a license or a security interest in respect of a patent application or a patent be recorded under the law of your country?
[Reference: PLT Rule 17(1)]
A10-1 Recordation of a license: Yes
Recordation of a security interest: Yes
If one or both of the answers is(are) “Yes”, please proceed to Q10-2. If both answers are “No”, please skip to Q11.
Q10-2 Does your Office require the following elements to be contained in the request for recordation of a licence (or a security interest)?
(a) A statement that the information contained in the request is true and correct
(b) Information relating to any government interest by your country
(c) Information relating to the registration of the license (security interest)
(d) The date of the license (security interest) and its duration
[Reference: PLT Rule 17(1)(b)]
A10-2 Information relating to the registration of the license (security interest)
Q10-3 Which documentation relating to the basis of the license (or security interest) is required by your Office under the following circumstances?
[Reference: PLT Rule 17(2)]
A10-3 The license is a freely concluded agreement: Copy of agreement
The license is not a freely concluded agreement (ex. operation of law or a court decision): Copy of court order.
Q10-4 Where the licence (or security interest) is a freely concluded agreement, does your Office require that any applicant, owner, exclusive licensee, co-applicant, co-owner or co-exclusive licensee who is not party to that agreement give his/her consent to the recordation of the agreement?
[Reference: Rule 17(2)(d)]
A10-4 Yes
Q10-5 Where a single request for recordation of a license (or security interest) relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 17(5)]
A10-5 No
Q11: Request for Correction of a Mistake
Q11-1 Does your Office prescribe the following requirements with respect to a request for correction of a mistake?
(a) The request shall be accompanied by a replacement part or a part incorporating the correction
(b) The request shall be subject to a declaration by the requesting party stating that the mistake was made in good faith
(c) The request shall be subject to a declaration by the requesting party stating that such request was made without undue delay following the discovery of the mistake
(d) The request shall be subject to a declaration by the requesting party stating that such request was made without intentional delay following the discovery of the mistake
[Reference: PLT Rule 18(1)(b) to (d)]
A11-1 The request shall be accompanied by a replacement part or a part incorporating the correction.
Q11-2 Where a single request for the correction of a mistake relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 18(3)]
A11-2 No
[End of questionnaire]
April 2009