Australian Patent FAQs

A provisional application is a type of patent application that is filed to obtain a first or early filing date (priority date) for protection of an invention. The provisional application cannot become a granted patent, but one or more compete patent applications can be filed subsequently that claim the priority date of the provisional application. A complete application is subject to examination and can lead to patent grant.

A provisional application will last for 12 months after filing. If continued patent protection is desired, further action such as filing of a complete application must be undertaken before the 12-month period expires.

The deadline for filing a complete application that claims the priority date of a provisional application is 12 months from the filing date of the provisional application.

Separate complete applications may be filed in each country where patent protection is desired within 12 months from filing of a provisional application. Alternatively, an international (PCT) patent application may be filed within 12 months from filing a provisional application.

Unlike a complete application, a provisional application is never published or subject to examination, and it has a lower patent office filing fee. This can provide advantages at the early stages of the patent process when an invention and associated IP strategies are still being developed.

Further, since a granted patent typically lasts for a maximum of 20 years from the filing date of the complete application, delaying filing of a complete application until 12 months after filing a provisional application can extend the overall length of protection by 12 months.

A 12-month ‘grace period’ is available for filing an Australian patent application following certain public disclosures of the invention. However, this applies only if a complete application is filed before the end of this period. Particularly when the end of the grace period is close, it may not be appropriate to file a provisional application and instead it may be necessary to file a complete application from the outset.

A provisional application filed in Australia provides, in effect, international provisional protection while it remains pending. This is because, within 12 months of filing the Australian provisional application, complete applications, including an international (PCT) patent application, can be filed throughout the world that claim the priority date of the Australian provisional application.

When a complete patent application claims the priority date of an earlier application such as a provisional application, the complete application is treated as if it was filed on the same day as the earlier application (in respect of subject matter common to both applications). Having an early priority date is important for the patent process, as patentability is assessed in part based on what was already known before the priority date.

Within the 12-month period following filing of a first provisional application, further provisional applications may be filed to cover updates to an invention. A complete application can be filed before 12 months from the filing date of the first provisional application that incorporates the subject matter of all provisional applications and claims their respective priority dates.

A provisional application can be withdrawn within the 12-month period after filing. This is normally done if it is desired to restart the patent application process. After withdrawing, the provisional application may be refiled, restarting the clock before the complete application must be filed. However, the priority date of the earlier provisional application will be lost when it is withdrawn and refiled. Care should therefore be taken to ensure that the applicant has not already publicly disclosed the invention in the intervening period. Any potential disclosures or activity by competitors in the intervening period should also be considered.

It is important that the applicant’s entitlement to an invention (and associated patent rights) from the inventors is clear. We recommended that entitlement is confirmed via a confirmatory assignment deed that explicitly references the provisional application and that is completed before filing of a complete application. FB Rice is able to assist with preparation of assignment documents.

The research and development that went into developing the technology described in a patent application may be eligible for a refundable R&D tax offset. FB Rice has an R&D tax team that can discuss how your company can access the refundable tax offset.

Even if patentability searches have been carried out prior to filing the provisional application, you may wish to consider further patentability searching prior to filing of any complete application. One option is to request an international-type search report from IP Australia. Patentability searching can help with understanding the chances of success before any further patent filing costs are incurred.

It is not uncommon for changes to be made to an invention after a provisional application is filed. Please discuss any changes with FB Rice before publicly using or disclosing the changed invention. FB Rice can assess whether any action needs to be taken to protect the changes.

The Australian national phase deadline is 31 months from the earliest priority date.

Retroactive extension of the national phase deadline is only available in a limited set of circumstances, such as where the deadline has been missed due to an 'error or omission' or 'circumstances beyond control'.

There are no power of attorney, declarations, or inventor assignment documents required to be signed by the applicant or inventors. Certified copies of priority applications are not required at the time of filing and would only be required later if requested by IP Australia.

An English translation of the specification and any amendments made during the international stage must be filed at the time of filing the national phase application. Verification of translation is no longer required.

No fees for excess claims or excess pages are due at filing. However, once the application is accepted, excess official fees will be payable for any accepted claims in excess of 20 claims. If necessary, the number of claims can be reduced during examination to minimise official fees.

Examination must be requested within two months of the date of a direction to request examination by IP Australia, and no later than five years from the international filing date.

Accordingly, examination does not need to be requested at the time of filing a national phase application. However, FB Rice typically offers a discount on service fees for requesting examination at the same time as filing the national phase application.

There are no official fees for requesting amendments to the specification in anticipation of examination or during examination. However, an official fee will apply if amendments are to be formally incorporated into the specification and published by IP Australia before grant to take advantage of greater provisional protection.

A 12-month 'grace period' is available for filing an Australian patent application following certain public disclosures of the invention. For example, information made publicly available, with or without the consent of the applicant, the patentee, or the inventor, within 12 months before the effective filing date of a complete Australian application (being the international filing date for an Australian national phase application), may be disregarded from the prior art base for assessment of novelty and inventive step.

Australian legislation does not expressly exclude software and business methods from patent protection, but IP Australia's assessment of the eligibility of these inventions for patent protection, based on interpretation of case law, is relatively strict. Please contact us if you are concerned about filing an application in Australia due to the subject matter of the application.

Methods of medical treatment are generally considered patentable subject matter in Australia.

As ‘trans-Tasman’ registered attorneys, we are qualified and experienced in filing and prosecuting national phase applications in New Zealand. We also have an FB Rice New Zealand office. The deadline to file a national phase application from a PCT application in New Zealand is also 31 months from the earliest priority date. Please advise us before the 31-month deadline if you would like to file a national phase application in New Zealand or if you would like a cost estimate for the same.

While FB Rice can arrange filing of national, and regional filings, in any PCT jurisdiction, we have established a particularly streamlined and cost-effective approach to filing applications in South East Asia and specifically in Singapore, Indonesia, Malaysia, Thailand, Vietnam and The Philippines. The deadline to enter the national phase in some of these countries is 30 months from the earliest priority date so any filing instructions should be provided before then.

The deadline to file a patent application in Australia that claims priority to an earlier application filed in a Paris Convention country, is 12 months from the earliest priority date.

Retroactive extension of the filing deadline is only available in a very limited set of circumstances, such as where the deadline has been missed due to an ‘error or omission’ or ‘circumstances beyond control’.

There are no power of attorney, declarations, or inventor assignment documents required to be signed by the applicant or inventors. For convention applications, certified copies of priority applications are not required at the time of filing and would only be required later if requested by IP Australia.

An English language specification is required at the time of filing the application. It is not possible to file a non-English specification and file a translation later.

No fees for excess claims or excess pages are due at filing. However, once the application is accepted, additional official fees will be payable for any accepted claims in excess of 20 claims.. If necessary, the number of claims may be reduced during examination to minimise official fees.

Examination must be requested within two months of the date of a direction to request examination by IP Australia, and no later than five years from the filing date.

Accordingly, examination does not need to be requested at the time of filing the application. However, FB Rice typically offers a discount on service fees for requesting examination at the same time as filing the application.

There are no official fees for requesting amendments to the specification in anticipation of examination or during examination. However, an official fee will apply if amendments are to be formally incorporated into the specification and published by IP Australia before grant to take advantage of greater provisional protection.

A 12-month ‘grace period’ is available for filing an Australian patent application following certain public disclosures of the invention. For example, information made publicly available, with or without the consent of the applicant, the patentee, or the inventor, within 12 months before the filing of a complete (non-provisional) Australian application, may be disregarded from the prior art base for assessment of novelty and inventive step.

Australian legislation does not expressly exclude software and business methods from patent protection, but IP Australia’s assessment of the eligibility of these inventions for patent protection, based on interpretation of case law, is relatively strict. Please contact us if you are concerned about filing an application in Australia due to the subject matter of the application.

Methods of medical treatment are generally considered patentable subject matter in Australia.

As ‘trans-Tasman’ registered attorneys, we are qualified and experienced in filing and prosecuting patent applications in New Zealand. We also have an FB Rice New Zealand office. Please advise us if you would like to file in New Zealand or if you would like a cost estimate for the same.

While FB Rice can arrange filing of applications in any country or region, we have established a particularly streamlined and cost-effective approach to filing applications in South East Asia and specifically in Singapore, Indonesia, Malaysia, Thailand, Vietnam and The Philippines. Please advise us if you would like to file in any of these countries or if you would like a cost estimate for the same.

An Australian patent application is only examined after examination is requested. Examination can be requested voluntarily at any time, including at the time of filing the application.

Examination must be requested within two months of the date of a direction to request examination by IP Australia, but no later than five years from the filing date of the application (the PCT filing date for national phase applications).

FB Rice typically offers a discount on service fees for requesting examination at the same time as filing an Australian patent application.

There are no as-of-right extensions of time available to request examination for an Australian patent application. Retroactive extensions of time are only available in a very limited set of circumstances, such as where the deadline has been missed due to an ‘error or omission’ or ‘circumstances beyond control’.

Issuance of a first examination report commonly occurs within about 12 or 18 months of filing the request for examination. However, timing varies depending on the technology field.

There is no set deadline for responding to an examination report. However, once a first examination report has issued, the applicant has a non-extendible period of 12 months to address any objections in the first examination report, and in any subsequent examination reports that might issue, and achieve acceptance of the application.

After examination has been requested, the application may proceed straight to acceptance following examination if there are no objections from the examiner. We therefore recommend requesting postponement of acceptance when requesting examination so that a first examination report will always issue. This will ensure that there is a future opportunity to broaden the claims, which is not possible after acceptance. It will also provide an opportunity to reduce the total number of claims to minimize acceptance fees if there are more than 20 claims, and to make standard amendments in view of Australian practice. It is often more efficient to make such amendments once examination has commenced and an indication on the patentability of the claims has been received.

It is possible to request expedition of examination under certain circumstances including fast tracking for small enterprises or green technology, along with a variety of other acceptable commercial reasons. Australia is a party to the Global Patent Prosecution Highway (GPPH) program and also participates in a Patent Prosecution Highway (PPH) pilot program with the EPO.

We must inform IP Australia of the entitlement of each applicant to the invention at the time of filing a request for examination. IP Australia has developed a generic statement of entitlement that we may use.

Any number of claims may be filed and examined without attracting excess claim fees. However, an official fee will be payable to IP Australia at acceptance, based on the total number of accepted claims. The fee will be calculated as follows:

Once the application has been accepted, there is no provision for reducing this fee. We therefore recommend considering reducing the total number of claims during examination to reduce fees at acceptance.

Voluntary amendments to the specification may be made when requesting examination and any time up to acceptance of the application, including in response to a first or subsequent examination report.

There are no official fees for requesting amendments to the specification in anticipation of examination or during examination. However, an official fee will apply if amendments are to be formally incorporated into the specification and published by IP Australia before grant to take advantage of greater provisional protection.

Amendments made during prosecution may change the subject matter claimed and mean that the inventor details provided at filing are no longer correct. In those cases, we recommend updating the named inventors to reflect the changed subject matter. Inventor declarations are not required.

An Australian patent application is only examined after examination is requested. Issuance of a first examination report commonly occurs within about 12 or 18 months of filing the request for examination. However timing varies depending on the technology field.

There is no set deadline for responding to an examination report. However, all objections raised in an examination report, and any subsequent reports that may issue, must be overcome prior to an acceptance deadline.

A non-extendible acceptance deadline is set at 12 months from issuance of a first examination report. All objections raised in the first examination report, and any subsequent reports that may issue, must be overcome prior to the acceptance deadline. As such, we recommend filing a response to any examination report at an early stage and well before the acceptance deadline expires.

The acceptance deadline cannot be extended. Therefore, if it becomes apparent that acceptance will not be achieved prior to expiry of the acceptance deadline, a divisional application should be filed in order to maintain rights. In these circumstances, the divisional application must be filed before the acceptance deadline expires.

After examination has been requested, the application may proceed straight to acceptance following examination if there are no objections from the examiner. In most cases we therefore request postponement of acceptance when requesting examination so that a first examination report will always issue. This ensures that there is a future opportunity to broaden the claims, which is not possible after acceptance. It also provides an opportunity to reduce the total number of claims to minimize acceptance fees if there are more than 20 claims, and to make standard amendments in view of Australian practice. It is often more efficient to make such amendments once examination has commenced and an indication on the patentability of the claims has been received.

Any number of claims may be filed and examined without attracting excess claim fees. However, an official fee will be payable to IP Australia at acceptance, based on the total number of accepted claims. The fee will be calculated as follows:

Once the application has been accepted, there is no provision for reducing this fee. We therefore recommend considering reducing the total number of claims during examination to reduce fees at acceptance.

Voluntary amendments to the specification may be made at any time up to acceptance of the application, including in response to a first or subsequent examination report. There are no official fees for requesting amendments to the specification during examination. However, if amendments are to be formally incorporated into the specification and published by IP Australia before grant to take advantage of greater provisional protection that may be conferred by earlier publication of the amendments, an official fee will apply.

Examiner interviews, such as those undertaken in the US, are generally not conducted in Australia. Whilst we can discuss objections with examiners by telephone, the scope of these discussion is usually limited. A request for a hearing is possible but it involves a greater degree of formality as compared with a US style examiner interview.

Read more: https://www.fbrice.com.au/ip-news-insights/sometimes-its-best-to-be-heard

Multiple claim dependencies are allowable. Furthermore, a multiply-dependent claim can be dependent on another multiply-dependent claim. There are no additional fees for including multiply-dependent claims.

There is limited scope to request amendments to a patent specification after acceptance. Amendments to correct a clerical error or an obvious mistake, or to comply with micro-organism deposit requirements, are generally possible. Other proposed amendments may be allowed provided that they do not broaden the scope of the claims as accepted.

The term of patents related to human pharmaceutical inventions may be extended by up to five years in Australia. There are a number of requirements to qualify for a patent term extension.

Read more: https://www.fbrice.com.au/ip-news-insights/accessing-patent-term-extension-pte-in-australia-are-rights-being-eroded

Divisional applications can be filed at any time while the parent application is still pending.

Where a parent application is accepted after examination, the deadline to file a divisional patent application is 3 months from advertisement of the acceptance of the parent application.

Otherwise, any divisional application must be filed before the acceptance deadline expires.