Ten things that set the Australian patent system apart from the US patent system
by Wadeson IP on October 13, 2015
- Filing is simpler – there is no need to file a Power of Attorney, Oath, Declaration, Assignment or any similar formal document. ‑> Convention and national phase filing requirements
- Examination is not automatic, but rather must be requested, usually by about 45 months from the priority date. ‑> more
- ‘Allowance’ is called ‘acceptance’ – Australian standard patent applications are accepted when they pass substantive examination.
- Acceptance deadlines rather than response deadlines – examination reports on Australian standard patent applications have a 12 month deadline for overcoming the examiner’s objections (and otherwise placing the application in order for acceptance).
- No express limit on the number of examination reports – if a response to an examination report is unsuccessful and time permits, a further examination report will issue. Within the 12 month acceptance period there may be multiple reports and corresponding responses to those reports. Subsequent examination reports (if not a Notice of Acceptance) usually issue within about a month of filing a response.
- Rule 13 of the PCT is applied with assessing unity of invention, thus the independent claims should each relate to the same special technical feature which makes a contribution over the prior art. This often leads to the claims being grouped differently to how they might be grouped in a restriction requirement in respect of a corresponding US patent application – for example, separate claims to method and apparatus aspects of the same invention are routinely allowed to proceed in the one application.
- Australian patent examiners often endorse the reasoning in IPRPs, US Office Actions and EPO Communications.
- Multiple claim dependencies are allowed, including ‘multiple on multiple’ appendency (i.e. a multiply-dependent claim can be dependent from claims that are themselves multiply-dependent).
- Excess claim fees are based on the number of claims at acceptance (allowance). The fees are are applicable to each claim after the 20th Claims can be deleted during prosecution to minimise or avoid excess claim fees. There are no additional fees for multiple dependencies.
- Innovation (8 year) patents which are akin to utility models in other countries. They are typically granted as a matter of course within a few weeks of filing and without substantive examination, although the additional (and usually optional) step of examination is required before they can be enforced. For the patent to be valid, the invention must have an ‘innovative step’ which is a rather low threshold. There is no non-obviousness requirement. Generally speaking, any variation over the closest art that is ‘real or of substance’ is sufficient. ‑> more
