Actuate IP Group’s qualified attorneys are registered to practice in both Australia and New Zealand, and provide a wealth of knowledge and experience in handling the filing, prosecution, maintenance and enforcement of Australian patent applications .

Our patent attorneys also hold science degrees with experience in drafting and prosecuting patents across a broad range of technological areas including, mechanical engineering, physics, electrical, chemical, biotechnology, information technology and telecommunications. Our trade mark attorney and IP lawyers have extensive experience in efficiently handling our overseas associates Australian trade mark and IP opposition / legal dispute matters.  At Actuate IP group we pride ourselves with our exemplary customer service and client-orientated focus which will ensure that you remain constantly updated on all your client’s matters with the ability to obtain prompt and accurate information regarding the status of your client’s application(s) at any time. We provide high quality expert and tailored advice to provide the best IP strategies and solutions for your needs at competitive and accessible costs.

Actuate IP Group’s Australian Patent Practice

In Australia, an invention is protected by a patent which is governed by legislation prescribed in the Patents Act 1990 (Cth). The patent may be a standard patent or an innovation patent. The innovation patent was introduced in 2001, and provides a relatively quick means of obtaining a short term of patent protection of 8 years for inventions with a lower inventive threshold. An Australian patent application can fall into one of three categories:

• Convention Application – an application claiming priority from one or more earlier application(s), filed in Australia or a foreign country that is a member to the Paris Convention, filed no more than 12 months earlier.
• Non-Convention Application – an application which does not claim priority and generally must be filed before the invention is publicly disclosed. In Australia however, there is a grace period which allows an application to be filed within 12 months from the first publication or use of the invention. 
• National Phase Application – an application based on a PCT application which has designated Australia. The time limit for filing a national phase application in Australia under PCT chapter (PCT Article 22) and chapter II (PCT Article 39(1)) is 31 months from the priority date.

Patentability Requirements for Australia

In order for an invention to be considered patentable under s18 Patents Acts 1990 (Cth), it must satisfy the following criteria:

• Be a manner of manufacture
• Be ‘novel’ and ‘inventive’ when compared to the prior art base
• Be useful
• Not have been secretly used.

Novelty

Australia is an absolute novelty country thus, the prior art base for determining novelty includes publication or public use of the invention anywhere in the world.

Grace Period

The grace period introduced in Australia on 1 April 2001, provides an applicant with 12 months under reg 2.2(1A) in which to file a patent application from the date the invention was first publicly disclosed. This exclusion only applies to information made publicly available after 1 April 2001.

Entitlement

s15 Patents Act 1990 (Cth) prescribes that a patent may only be granted to a legal person who is the inventor or is entitled to a granted patent. Thus, a Notice of Entitlement must be filed at any time before acceptance, stating the applicant’s entitlement to a granted patent for the invention.

Filing Requirements in Australia

Please note that in Australia, we are able to sign documents on behalf our clients. Therefore, no Power of Attorney document is required. In order or us to file a patent application in Australia we require the following documentation:

National Phase Application

• Applicant’s details
• PCT Application Number 
• Inventor’s details 
• Details of applicant’s relationship to the inventor (if not the inventor) 
• Verified translation of the patent specification and international search report if the PCT Application is published in a language other than English (a copy of the Verification Form can be downloaded in our Resources section) 
• Copy of any other search results produced by a Patent Office

Convention Application

• Applicant’s details
• Inventor’s details 
• Details of applicant’s relationship to the inventor (if not the inventor) 
• Copy of the complete patent specification in English 
• Details of the priority application 
• Certified copy of the priority document (verified translation if not provided in English) 
• Copy of any other search results produced by a Patent Office

Non-Convention Application

• Applicant’s details
• Inventor’s details 
• Details of applicant’s relationship to the inventor (if not the inventor) 
• Copy of the patent specification in English or Invention Disclosure Statement for us to prepare the application (a copy of this form can be obtained in our Resources section) 
• Details of the first publication or use of the invention (if applicable