Filing Patents from Overseas
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Filing Requirements
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Australian applications can be convention applications, non-convention applications or national phase (PCT) applications.
Convention applications must be filed within 12 months of the priority date of the earliest basic application.
For PCT applications, the deadline for entering the national phase in Australia is 31 months from the earliest priority date.
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Convention or Non-Convention Applications
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In order to file a convention or non-convention application, we require the following:
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Specification (in English) comprising:
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- title
- description (2 copies)
- claims (2 copies)
- drawings on letter quality A4 paper (2 copies)
- abstract (2 copies)
- Full name(s) and address(es) of the applicant(s).
- Full name(s) of the inventor(s).
- Details of the assignment or other transfer of rights in the invention from the inventor(s) to the applicant(s).
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If the application claims convention priority we also require:
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- Details of the country(ies), application date(s), applicant(s) and application number(s) of the basic application(s); the earliest must be included.
- If the applicant is not the applicant of the basic application(s): details of how the applicant became entitled to claim priority from the basic application.
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However, in an emergency, we can secure an effective filing date for a Convention application with only the country, number and date of the basic application, the title of the invention and the broadest claim.
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National Phase (PCT) Applications
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In order to file a National Phase (PCT) Application, we require the following:
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- A verified English translation of the specification if the published PCT application is not in English. (see suitable verification of translation to be signed by translator to accompany the English translation
- Copy of published PCT pamphlet
- Copy of PCT request
- Copy of International Search Report
- Copy of International Preliminary Report on Patentability (chapter 1 & 2)
- Copy of Articles 19 & 34 amendments
- Details of the assignment or other transfer of rights in the invention from the inventor(s) to the applicant(s).
- If the applicant is not the applicant of the basic application(s): details of how the applicant became entitled to claim priority of the basic application(s).
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However, in an emergency, we can enter the national phase with only the number of the PCT application.
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Forms
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No forms need to be signed by the applicant(s) or the inventor(s) in order to file an Australian patent application. We can prepare and file all necessary forms on behalf of the applicant(s) provided we are given the information referred to above.
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Filing Trade Marks From Overseas
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Filing Requirements
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In order to file a trade mark application, we require the following:
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- Details of the trade mark - if the trade mark is a device we require a good quality representation. Details of the goods and/or services for which the trade mark is to be registered and multi-class applications are available and an indication of the international class(es) would be useful.
- Full name, address and country of incorporation of the applicant and its ACN if it is an Australian company.
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Convention applications
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If the application is to claim convention priority we also require:
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- Details of the country, application date and numbers of any basic applications from which priority is to be claimed. Normally, we are not required to file a certified copy of the basic application. However, it may be necessary to provide a copy if a dispute arises over the claim to priority.
- An Australian application claiming Convention priority can be filed within six months of the date of filing the basic application. If registered, the Australian application will be deemed to be registered from the date of the basic application rather than from the date of filing in Australia.
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Forms
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A power of attorney or other authorisation document is not required for the filing of an application. Further, no documentary evidence of an intention to use the mark is required.
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Madrid Protocol
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Australia is a signatory of the Madrid Protocol and may be nominated as part of an International application.
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Filing Designs from Overseas
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A single design application may be in respect of: (a) one design in relation to one product; (b) one design that is a common design in relation to more than one product; (c) more than one design in relation to one product; or (d) more than one design in relation to more than one product, if each product belongs to the same Locarno Agreement class.
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Filing Requirements
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In order to file a design application we require the following:
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- Representations (5 copies) of the product to which the design has been applied. Clear photographs are also acceptable. The representations should show a perspective view of the product and a view from every elevation.
- Name of the product to which the design relates.
- Full name and address of the applicant, together with the Australian Company Number (ACN) if the applicant is an Australian company.
- Full name of the designer or designers..
- Whether the applicant wishes to register or publish each design.
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Registration (when followed by successful examination) results in a grant of monopoly rights in the design, whereas publication results in the design being published in the Register but does not confer any rights. We will assume that the applicant wishes to register each design unless we are specifically instructed to request publication only.
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Convention Applications
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If the application is to claim convention priority, we also require the following:
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- Details of the basic application from which priority is to be claimed including the country, application date, applicant and application number of the basic application.
- If the applicant is not the applicant of the basic application, details of how the applicant became entitled to claim priority of the basic application.
- A certified copy of the basic application and a verified translation (if the basic application is not in English); these documents do not need to be filed before registration, but will be required for subsequent examination.
- The deadline for filing a convention application is 6 months from the priority date. If the anniversary of the priority date falls on a weekend or public holiday in Australia, the application can be filed on the next working day.
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Minimum Filing Requirements
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We can file an application if you provide us with the following:
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- A single copy of the representations showing the main views
- The applicant’s name and address details.
- Details of any basic application including the country, application number and date of the basic application.
- oIdeally, the designer(s) name(s) should be provided at application stage. There is an opportunity to add this information within a short time after filing the applications, however this will cause registration of the application to be delayed.
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Forms
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No forms need to be signed by the applicant or designer(s) in order to file an Australian design application. It is not necessary to lodge any document setting out how the applicant derived its entitlement in the design from the designer(s).
We can prepare and file all necessary forms on behalf of the applicant, provided that we are given the information and documents referred to above.
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