PCT National Phase Entry in Australia
Laminar IP - Australian Patent Attorneys
Our Australian Patent Attorneys can assist patent owners and foreign attorneys with entering the Australian National Phase of a PCT application.
Australian National Phase Deadline
The deadline for entering the National Phase in Australia is 31 months from the earliest priority date.
To enter the National Phase in Australia, the following documents and particulars are required:
The PCT Application Number and/or Publication Number; and
If the specification of the PCT Application was published in a language other than English:
an English translation of the specification as originally filed; and
an English translation of any Article 34 amendments.
No Power of Attorney, or other form executed by the inventor(s) or applicant(s), is required. Also, a certified copy of the priority application(s) will not be required unless specifically requested by the Australian Patent Office.
Late Entry/Filing and Extension of Time
Australia does have an extension of time provision as they relate to an “error or omission” by the applicant and/or the agent, or indeed “circumstances beyond the control” of the applicant. Accordingly, if the circumstances that led the applicant/agent to miss the National Phase deadline meet this criteria, it is possible to belatedly enter the Australian National Phase and concurrently file a request for an extension of time (RET). The RET would need to be supported by a Declaration explaining the circumstances associated with the failure to timely enter the Australian National Phase. However, the Declaration can be filed after filing the RET and typically the Australian Patent Office will require the Declaration within two (2) months.
It is important to note that a key issue in deciding any RET is establishing that prompt action was taken once the failure to meet the deadline was discovered.
After entering the National Phase in Australia, examination must be requested within 5 years from the filing date (i.e., the international filing date). However, in practice, the Australian Patent Office will set an earlier deadline by issuing a Direction to Request Examination. Once the Direction issues, examination must be requested within 2 months. From our experience, the Direction will typically issue about 55 months from the filing date due to delays at the Australian Patent Office.
After requesting examination, it will typically be 12-18 months before a first examination report issues. The acceptance (i.e., allowance) deadline will be 12 months from the date of the first examination report.
Following successful examination, the application will proceed to acceptance and third parties are provided with an opportunity to oppose the grant of a patent within 3 months of the advertisement of acceptance. If there is no opposition, a patent will issue shortly thereafter.
The flow chart below outlines the typical stages of prosecution in Australia.
For assistance with entering the National Phase in Australia, or if you have any questions, please feel free to contact us.
Tel: (02) 8379 1281
Int'l Tel: +61 2 8379 1281
Level 13, 111 Elizabeth Street
New South Wales 2000
PO BOX 599
New South Wales 1565