IP Overview of Australia

By Cullens Patent & Trade Marks Attorneys in Australia,[Comprehensive Reports]

The registration of patent, trade mark, industrial design and plant breeder rights are administered by IP Australia. Infringement, revocation and cancellation proceedings may only be initiated in a court of law. Australia is a signatory to all major international treaties, conventions and agreements in relation to IP.


In addition to provisional patent applications, Australia has a two-tier patent system-the 20-year standard patent (up to 25 years for pharmaceuticals) and the 8-year innovation patent. A standard patent application must be examined prior to grant. The main substantive tests applied for patentability are absolute novelty and inventive step (non-obviousness). A standard patent can be granted well within 12 months of filing if processing is expedited at the request of the applicant. All objections must be overcome within 21 months from the date of issue of the first examination report, with response fees accruing on a monthly basis for any response filed more than 12 months after the date of issue.

The Australian law will change on 15th April 2013 to require that all objections be overcome within 12 months from the date of issue of the first examination report. Other changes include raising the threshold for inventiveness for applications in relation to which a request for examination has not been filed prior to 15th April 2013 and to the pre-grant opposition process.

An innovation patent is not examined prior to grant, with grant typically occurring shortly after filing. An innovation patent is not enforceable, however, until it has been examined at the request of the applicant and certified by IP Australia. Although absolute novelty is required, the threshold for inventiveness is lower than that required for a standard patent. The innovation patent is therefore suitable not only for inventions with a shorter life, but also those which may be considered obvious when compared to the prior art base. Unlike a standard patent, an innovation patent must have no more than 5 claims.

The Australian patent system provides a grace period for public disclosure of an invention, by or with the consent of the applicant or inventor, without affecting the validity of a subsequently granted patent provided that an Australian standard or innovation application is filed within 12 months of the earliest disclosure. Australia also has a general extension of time provision which allows for an extension of the time to do a “relevant act” if, because of an error or omission by a person (applicant or its agent) or circumstances beyond the control of the person concerned, the relevant act is not or cannot be done within that time.

Trade Mark

Registrable trade marks include words, devices, labels, aspects of packaging as well as colours, sounds, shapes and scents, provided that they are distinctive or capable of becoming distinctive with use. Generally speaking, non-traditional trade marks are considered by IP Australia as lack distinctiveness unless used extensively in the marketplace. Actual use is not required in order to file a trade mark application; an intention to use the mark is sufficient. Multi-class filings are allowable and registration fees are payable per class.

The main substantive tests applied during examination are capacity to distinguish (non-descriptiveness) and conflict with trade marks already on the Register. A trade mark registration has an initial term of 10 years from the date of application and may be renewed for additional 10 year periods. It is not required that actual use of the trade mark be established for renewal. However, a registered trade mark may be removed at the request of a third party if unused for a continuous period of 3 years.


A design registration has an initial five-year term and is renewable once only for a further five-year period. A design application will proceed to registration shortly after filing, provided that all formalities requirements are met. A registration is not enforceable, however, until it has been examined at the request of the applicant and certified by IP Australia. To be certified, the design must be new and distinctive, and it need not be ornate, and it can be of indefinite dimension. Use in Australia or a documentary publication anywhere in the world will normally deprive a design of novelty. Australian law also provides for a spare parts exemption to infringement.


(Source: International IP Law Firms)



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