Useful Information

Australian National Phase Entry and Convention Patent Applications

We have extensive experience in filing national phase and Convention patent applications in Australia, and elsewhere. A senior patent attorney will carefully consider your application from filing through to grant and advise you accordingly with respect to the law and practise in Australia as required. Patentability requirements in Australia are similar to those of other first world countries including a “universal” novelty standard. If you have specific questions on patentable subject matter or otherwise please contact us.

Requirements for filing National Phase Entry

1. PCT number and details of the applicant(s) and inventor(s)
2. Copy of front page of published pamphlet
3. Details of any amendments made during prosecution including a copy of any  amended pages.

Requirements for Filing Convention Patent Applications in Australia

1. Convention details including the priority date, priority number and applicant details
2. Copy of the convention specification, with any drawings
3. Details of the applicant(s) and inventors(s) of the Australian application

No documents need be signed by the applicant and no power of attorney is required for filing a convention application in Australia.

Australian Design and Convention Design Applications

Australian designs need to be “new and distinctive” at the time of filing or the priority date. The Designs Act 2003 raised the bar of distinctiveness required for design registration and drastically changed the prosecution process. Design applications are registered following a formalities check; substantive examination occurs post registration and only at the request of the owner or a third party. A design registration can only be enforced after being examined and certificated as valid. You may like to consider recommending design registration in Australia to your clients as a quick, and extremely economic way of protecting the look of an article. Design protection, of course, only relates to the look and overall appearance of an article, not its function. However, it is a useful tool to use in concert with patent protection.

Requirements for Design Registration

1. A set of representations showing the design from several angles such as perspective, plan from above, side view, other side view and plan from below.
2. Details of the applicant(s) and designer(s)
3. Details of any Convention claim including priority date, number and applicant(s) details
4. An indication of whether the whole design is new or whether there are particular aspects which are new.

Australian & Convention Trade Mark Applications

Australian trade mark applications are substantively examined in Australia for both absolute and relative barriers to registration. Multi-class applications are allowable, as are service classes in accordance with the Nice classification.  We would be happy to assist you to achieve a trade mark registration in Australia. Contact us for a cost estimate or for a copy of our cost and information sheets.

Requirements for filing Trade Mark Applications in Australia

1. A copy of the mark and if a logo a clear copy, preferably in electronic format.
2. Details of the applicant(s)
3. Details of any Convention claim including priority date, number and goods and services.
4. Goods and services or if you would like us to draft the goods and services details of the nature of your client’s business

No documents need be signed by the applicant and no power of attorney is required for filing a trademark application Australia.

Madrid Trade Marks designating Australia

Let us assist your clients towards registration in Australia, we will use all our knowledge and experience to advise you as to your client’s options on encountering a potential barrier to registration.

Searches

We can provide you and your clients with search results and corresponding advice, for example, due diligence, number or owner searches for patents, trade marks or designs, freedom to use searches, infringement and validity searches, use of trade mark searches in Australia as required. Please contact us for a cost estimate.

Australian Renewals, Annuities or Maintenance Fees

We offer competitive rates for renewals for patents, trade marks and designs. Please contact us with your specific requirements and we will give you a cost estimate together with any special discount available. Discounts are available for instructions of multiple cases made at the same time.

Power of Attorney

We do not require a Power of Attorney to act for your clients in Australia. An Australian Patent Attorney can generally execute all the necessary documents for filing and prosecuting a trade mark, patent or design. Some actions such as assignment documents do still require signatures of the inventors or applicants. We can advise you in this regard if and when the situation arises.

Patent Costs

How much does a patent cost? Typically an Australian patent costs A$5000-8000 from filing through to grant. The cost depends on the complexity of the invention and the prior art or other objections raised during examination. Patents in other countries cost similar or more but considerable savings can be made using the PCT international patent application. Refer to our Patents section or contact us for further information.

Trade Mark Costs

How much does a trade mark registration cost? Typically Registration of an Australian trade mark costs A$1500-2500 from filing through to acceptance and registration. If there are lots of classes of goods and services or numerous citations or other objections are raised during examination the cost may be greater than a more straight-forward, single class application. Trade mark applications in other countries cost similar or more than in Australia but savings can be made using the Madrid international patent application, if lots of countries are of interest. Refer to our Trade Marks section or contact us for further information.

Design Registration Costs

How much does a design registration cost? Typically an Australian design registration costs A$1000-1500 from filing through to registration, excluding examination and preparation of the formal drawings. The cost of registering designs overseas is variable depending on the nature of the right obtained, for example. Please refer to our Designs section or contact us for more details.

Please contact us for our cost sheets or if you have a specific enquiry please let us advise you of our cost estimate, together with any available discount.