For Foreign Attorneys

Patents

Australia and New Zealand have 12 month Paris Convention priority deadlines for patents, and 31 month National Phase deadlines under Chapter I or Chapter II of the PCT.

Australia has absolute patent novelty requirements. Australia has a limited 12 month patent grace period: public disclosure of the invention by the applicant during the 12 month period preceding the filing date of an Australian non-provisional application (or the international PCT filing date) is not relevant to novelty or inventive step.

New Zealand has local patent novelty requirements. New Zealand does not have a grace period.

A Power of Attorney is not required to file a patent application in Australia or New Zealand.

Minimum filing requirements for a Convention / non-convention patent application in Australia or New Zealand are:

• Complete specification in English, including title, description, claims, drawings /sequences if any, abstract (however also see below Emergency patent filing in Australia)
• Name(s) & address(es) of applicant(s)
• For New Zealand: Name, address and nationality of each inventor and an explanation of how the applicant is entitled to the invention from the inventor(s), eg by assignment or employment contract.

Information that may be late filed for a Convention / non-convention patent application if necessary:

• Convention Priority details - Country, date, applicant(s) & number of basic priority application(s),
• For Australia: Name(s) of inventor(s)
• For Australia: An explanation of how the applicant is entitled to the invention from the inventor(s), eg by assignment or employment contract
• For Australia: An explanation of how the applicant is entitled to claim priority from the applicant of the basic priority application (if the priority applicant is different), eg by assignment or merger
• For New Zealand: Certified copy of basic priority application(s) (with verified English translation if applicable)

Minimum filing requirements for PCT National Phase Entry in Australia or New Zealand are:

• PCT application number / details identifying the application
• Verified English translation of PCT specification, including verified English translation of any amendments under Chapter I or Chapter II, if the PCT application is not published in English
• Name(s) & address(es) of applicant(s)
• For New Zealand: Name, address and nationality of each inventor and an explanation of how the applicant is entitled to the invention from the inventor(s), eg by assignment or employment contract.

Information that may be late filed for PCT National Phase Entry if necessary:

• Convention Priority details - Country, date, applicant(s) & number of basic priority application(s),
• For Australia: Name(s) of inventor(s)
• For Australia: An explanation of how the applicant is entitled to the invention from the inventor(s), eg by assignment or employment contract
• For Australia: An explanation of how the applicant is entitled to claim priority from the applicant of the basic priority application (if the priority applicant is different), eg by assignment or merger
• For New Zealand: Whether National Phase Entry is under Chapter I or Chapter II

Emergency patent filing in Australia

Australia allows emergency filing of a Convention application using a specification that merely cross-references another patent application filed in any Convention country in any language. We recommend that such filings are only used in an emergency situation. Please also provide in English the title and independent claims.

Design Registrations

Australia and New Zealand have 6 month Paris Convention priority deadlines for design registrations.

Australia has relative design novelty requirements, no grace period per se and a complex relationship with copyright law. Please contact us urgently if there has been any disclosure and you are interested in seeking design protection in Australia.

A Power of Attorney is not required to file a design application in Australia or New Zealand.

Minimum filing requirements for a design application in Australia are:

• Title of product to be protected
• 1 set of representations, preferably line drawings
• Name(s) & address(es) of applicant(s)

Information that may be late filed if necessary:

• 4 further sets of representations, preferably line drawings
• Convention Priority details - Country, date, applicant(s) & number of basic priority application(s)
• Name(s) of authors
• Explanation of how the applicant is entitled to the design from the authors(s), eg by assignment or employment

Minimum filing requirements for a design application in New Zealand are:

• Title of product to be protected
• 1 set of representations, preferably line drawings
• Name(s) & address(es) of applicant(s)
• Convention Priority details - Country, date, applicant(s) & number of basic priority application(s)
• Statement of novel features of the design

Information that may be late filed if necessary:

• 4 further sets of representations, preferably line drawings
• Certified copy of basic priority application(s)
• Nationality of applicant
• The name, address and nationality of each author and an explanation of how the applicant is entitled to the design from the author(s), eg by assignment or employment.

Trade Marks

A Power of Attorney is not required to file a trade mark application in Australia or New Zealand.

Minimum filing requirements for a trade mark in Australia or New Zealand:

• Details of mark (preferably an electronic copy)
• Name, address and nationality of applicant(s)
• List of goods and/or services, preferably classified according to 9th edition of the Nice Classification
• Convention Priority details - Country, date, applicant(s) & number of basic priority application(s)
• For New Zealand: A statement that the mark is being used or is proposed to be used in New Zealand by the applicant (or under the authority of the applicant) in relation to the goods and services specified

Information that may be late filed if necessary:

• Translation of any non-English words appearing in the trade mark