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Filing requirements for patent applications in Australia


This article explains the documents required to file a patent application in Australia, using either the Paris Convention route or PCT route. The formal requirements for patent specifications are also discussed.


Filing Requirements


1. Paris Convention route

The deadline for filing a patent application in Australia is 12 months from the earliest priority date.

The following documents and particulars are required to file an Australian patent application using the Paris Convention route:

  • An English language version of the patent specification and drawings;

  • Full name and address of the applicant(s);

  • Full name of the inventor(s); and

  • Full details of the priority application(s) (i.e., application number and filing date).


2. PCT route

The deadline for entering the National Phase in Australia is 31 months from the earliest priority date.

The following documents and particulars are required to file an Australian patent application as a PCT National Phase entry:

  • The PCT application number or publication number;

  • If a Chapter II Demand has been filed, a copy of the International Preliminary Report on Patentability (if available), together with any annexed amended pages;

  • If the specification of the PCT application was not filed in English:

> an English translation of the specification as originally filed; and

> an English translation of any Article 19/34 amendments.


Points to note:

  • No Power of Attorney is required.

  • No forms are required to be signed by the applicant(s) or inventor(s).

  • A certified copy of the priority application(s) will not be required unless specifically requested by IP Australia.

  • There is no requirement to disclose prior art.


Patent Specifications


The Patents (Formalities Requirements for Patent Documents) Determination 2019 (“the Determination”) made under subsection 229(1) of the Patents Act 1990 (“the Act”) outlines the formal requirements for documents to be filed. The following guidelines for patent specifications should generally be followed so as to meet Australian requirements.


The parts of a patent specification must be presented in the following order[1]:

  1. Description of the Invention

  2. Claim or claims

  3. Abstract

  4. Drawing or drawings

1. Description of the Invention

Each page of the description must be numbered in consecutive order starting from page ‘1’. The remaining pages are numbered 2, 3, etc.[2].

The description should typically include the following information (in the following order):

  • Title of the Invention

  • Field (of which the Invention relates)

  • Background (of the Invention)

  • Summary (of the Invention)

  • Brief Description of Drawings (if applicable)

  • Description of Embodiments

  • Sequence Listing (if applicable)

  • Citation List (if applicable)

The description must not include drawings but may include chemical or mathematical formulas and/or tables.[3]


2. Claim or claims

The claim or claims define the invention. Claims must commence on a separate page to the description and each claim must be numbered sequentially beginning with ‘1’.[4] Claims must not include drawings but may include chemical or mathematical formulas and/or tables, where necessary.[5]


Subsections 40(3), (3a) and (4) of the Act also provides that the claim or claims:

  • must be clear and succinct and supported by matter disclosed in the patent specification;

  • must not rely on references to descriptions or drawings unless absolutely necessary to define the invention; and

  • must relate to one invention only (unity of invention).

Please note:

  • Multiple dependencies are allowable in Australia.

3. Abstract

An abstract must commence on a separate sheet.[6] Regulations 3.3.(1) and (2) of the Patents Regulations 1991 (“the Regulations”) states that an abstract should be a concise summary of the disclosure contained in the description, the claims and any drawings and should preferably be between 50 to 150 words. Each main technical feature illustrated by a drawing must be followed by a reference sign placed between parentheses (e.g., member (10)…).[7]


In addition, an abstract must not include drawings, but may include chemical or mathematical formulas and/or tables.[8]

4. Drawing or drawings

Drawings must commence on a separate sheet.[9] Drawing pages must be numbered showing the page number and the total number of pages (e.g., 1/5, 2/5, etc.).[10] Each drawing should be numbered separately beginning with ‘1’.[11]


A drawing must be in durable, dense, uniformly thick and well-defined lines and strokes.[12] A drawings should preferably be without colouring, however, the use of colour is permitted if the colouring is necessary to the understanding of the invention.[13] Each element of a drawing must be in proper proportion to each other element of the drawing.[14]


A drawing must not include text, other than a word or words necessary to the understanding of the drawings.[15] If a reference sign is mentioned in the drawings, it must be mentioned in the description of the invention, and vice versa.[16]



Please contact us if you have any questions, or if you would like to discuss filing requirements in Australia.


Author:

Mark Teoh

Partner | Patent Attorney


[1] Section 10 of the Determination.

[2] Subsection 10(2) of the Determination.

[3] Subsection 12(2) of the Determination.

[4] Subsections 8(1) and 10(4) of the Determination.

[5] Subsection 12(3) of the Determination.

[6] Subsection 8(1) of the Determination.

[7] Subregulation 3.3(4) of the Regulations.

[8] Subsection 12(2) of the Determination.

[9] Subsection 8(1) of the Determination.

[10] Subsection 10(3) of the Determination.

[11] Subsection 15(17) of the Determination.

[12] Subsection 15(1) of the Determination.

[13] Subsection 15(3) of the Determination.

[14] Subsection 15(11) of the Determination.

[15] Section 13 of the Determination.

[16] Subsections 15(18) and (19) of the Determination.

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