Is Late National Phase Entry into Australia Possible?

It’s almost the deadline
Don’t miss the deadline, darling
When all your bad dreams will come true
Don’t miss the deadline
It’s almost the deadline, darling
I wouldn’t want it to happen to you

from the song Deadline – By Blue Oyster Cult

Unlike say Canada and China, there are no particular provisions for late national phase entry into Australia.  However, the general extension of time provision (under Section 223 of the Australian Patents Act), is applicable in some circumstances.  (This post is about late national phase entry but the situation is pretty much the same for the late filing of a Convention application into Australia.)

Extensions of time of twelve months (or even longer) have been granted in the past for late national phase entry into Australia .  So it is possible but it depends on the reasons why the applicant missed the initial 31 month deadline and, when they subsequently realised that they had missed it, what steps they then took.

The decision is made on a case by case basis and the applicant’s declaration explaining why the Australian national phase was not entered by the due date must be full and frank.  The Patent Office will be looking for the following factors:

The requirements in general are:

  1. There must have been an intention to enter the Australian national phase BEFORE the 31 month deadline.
  2. Due to an error or omission by the applicant or applicant’s attorney or other agent, the applicant did not take steps to enter the Australian national phase.  If the reason is simply that the applicant didn’t have sufficient funds for Australian national phase entry before the 31 month deadline then that would usually not be sufficient.
  3. Upon realising the error or omission the applicant acted quickly to request national phase entry.  If the applicant has after the passage of several months, for example, changed his mind and then decided to enter the Australian national phase then that would probably not be sufficient.  However, if the applicant has recently realised that he/she was incorrectly advised and then taken steps to enter the national phase late then that is much more likely to be sufficient.

A full and frank explanation of the above must be provided in a Declaration.

At the moment, the official extension of time fees are AU$100/month.

If the application for an extension of time to enter the national phase is unsuccessful then the $370 national phase entry fee will be refunded.  But, the AU$100/month extension fees will not be automatically refunded.


Changing Applicant Details for PCT Applications Before National Phase Entry

I’ve recently had to request the recordal of the change of applicant details on a PCT application.  It was a straightforward situation.  I had a signed Deed of Assignment from the current applicant company to the new applicant company.  The only complication was that the national phase entry deadline was less than a month away.

The first option was to submit a letter to IP Australia, which is the receiving office for this international patent application, requesting that they ask WIPO to record the change.  Because I wanted to be sure that the details of the new applicant were recorded on the WIPO database (Patentscope) before national phase entry I was concerned that lodging the request through IP Australia might add to the time taken for WIPO to receive and process the request.  The second option was to file directly with WIPO.  It is possible to do that and that’s what I ended up doing.

There’s no particular form for requesting the change in applicant details (there is a form for Receiving Offices to make the request but I don’t know of any form for applicants or attorneys).

There are a couple of ways to lodge the request with WIPO.  The simplest way is to send them a fax (fortunately WIPO still receives faxes, unlike IP Australia).  It’s also possible to register with WIPO’s online services and upload a PDF of the letter.  I took the second option and uploaded the letter with a copy of the assignment.  I then received a confirmation of my submission.

About three days later the PCT/IB/306 form issued confirming the recordal of the change with WIPO and the transmission of the change to the national offices.  About a week later I noticed that the new applicant details had appeared on the Patentscope database.

So, all in all a fairly straightforward procedure.


Prior Art Searching to Gauge Patentability

PatentSearchingYou can only get a valid patent if your invention is truly “novel”, i.e. new.  Apart from being novel the invention must also be inventive, for a standard patent or at least innovative, for an innovation patent.

Without getting too far off track I’ll just point out that at present ACIP (i.e. the Advisory Council for Intellectual Property) is investigating whether or not the innovation patent system is working properly.  Depending on the outcome of their investigations It could be that the innovation patent system will be either abolished or altered so that the test for “innovative” step is changed to the same test for “inventive step” that applies to standard patents.

Anyway, getting back on point, if an invention is lacking in novelty it will also automatically be lacking in innovation or inventive step.  So the first question is “is the invention novel?”. Continue reading

Removal of Trademarks for Non-Use

Although there are a few exceptions, the US Patent and Trademark Office (USPTO) generally requirRemovedTmRegoes that a trade mark applicant provides evidence that the mark has actually been used in the USA before the certificate of registration can actually issue.  Another country that has a similar requirement is Canada.  In addition to providing evidence of use before registration, some countries also require that evidence of use be provided at some stage after registration, usually before the registration can be renewed.

You’ll be interested to learn that in Australia there’s no requirement that an applicant must show evidence of actual use, either before registration or renewal of an Australian trade  mark.

Although there’s no requirement to show evidence of use there is a mechanism for third parties to apply for removal of a trade mark registration if they believe that the owner of the trade mark, or its authorized user, hasn’t been using the trade mark.  The baseline requirements for a non-use removal application are that the registration in question must have been in force for at least five years and that it hasn’t been used as a trademark in the preceding three years.

Before the current 1995 Trade Marks Act came into force the onus of proof was on the person requesting the removal.  Proving that the trademark owner hadn’t used the mark in the preceding years was very difficult to do and so many removal applications were unsuccessful.  That led to marks remaining on the register that should probably have been removed. Continue reading

Greetings from LA

About a month ago I had just got home and was in the kitchen talking to Megan when my mobile phone rang.  It was an inventor (I’ll call him “Jack”) calling from Los Angeles in California. Jack wanted to extend his US patent application coverage to Australia.


He said, “Hi Michael, I’ve got a patent application filed with the USPTO and I want to lodge in Australia. What’s the deal for doing that?”.

It was a great surprise to hear his US accent coming over the line.  Usually when I do work for clients in the USA, or other countries, it comes in as an email from their attorney.  Not as a direct phone call from the applicant / inventor.  My mobile phone number is on the contact page of my website so people can do exactly what Jack had done and simply give me a call.

I explained the process to Jack for filing his patent application in Australia including the time limits for doing so claiming priority from his US application.  I checked with him about a number of issues to make sure that he was all clear to go ahead in Australia.  Everything checked out fine.

“OK”, Jack said, “that all sounds goods”.  He made a credit card payment through the payment page of my website that evening and the next morning I lodged his application with IP Australia.

Patent Preparation for Regional Inventors

mapAustraliaI’m based in Brisbane but I’d say that about a third of the patent specifications I write are for inventors that are located in other parts of Australia.  I’ve prepared patent applications for people needing patent attorney help in lots of other towns e.g. Lismore, Melbourne, Townsville, Bundaberg, Caloundra, Cairns, to name a few.

My process for helping inventors that can’t meet with me face to face has gradually improved over the years.  If you call me about your invention then there are three main issues that I like to get sorted out initially.  Firstly, I want to make sure that your invention is more than a concept.  For example, do you know how to actually make the invention or are you still at the stage where you know what you want to the invention to do but you don’t know how it will do it?  I’ll ask you if you’ve got any drawings that illustrate your invention and show how it works.  If you’ve got a mechanical invention like a new builder’s tool or a component for an engine or a machine for working in a mining environment then the drawings will show a physical object and especially the new parts.

Continue reading

Power of Attorney Requirements – Chile

I’ve recently been organizing the lodgment of a patent application in Chile.

The duly legalized Chilean Power of Attorney

The duly legalized Chilean Power of Attorney

These days many countries either don’t require a Power of Attorney for a patent filing or if they do then a faxed, or scanned and emailed, copy of the power signed by the applicant will do.

In case you’re wondering, a Power of Attorney is a legal requirement of the country in question. It’s to formally empower the local patent attorney to represent the applicant before the particular country’s Patent Office.

You’ll appreciate the reasoning behind this.  It’s simply that without a Power being on file the Patent Office can’t be sure that the attorney has actually been authorised by the applicant. A few months previously I’d been involved with legalization of a Power of Attorney for the United Arab  Emirates.  That involved a notary public, the Australian Department of Foreign Affairs and Trade (DFAT) and the UAE embassy in Canberra, to which a fee of about $1200 had to be paid.

Continue reading

Office Move

It’s been an exciting time for us. When I say “us” I mean my dear wife and helper here Megan and me and also Nel, who’s recently joined us and is giving us a hand on the admin side of things. Exciting because we’ve just moved into a new office. We were at 196 Moggill Road for almost four years and the little office we had there was pretty much bursting at the seams.  It had been a jeweler’s shop in a previous life and was a bit of an unlikely spot to open a patent attorney office though it worked out surprisingly well for us.

Picture of Michael Buck IP patent and trademark attorney office

                                  Our new office at 97 Moggill Road Taringa

The new office is about 800 metres closer to Toowong along Moggill road, between the Mazda car dealership and Brisbane Boys College. It’s about three times bigger than our old place and has been completely refitted for the move thanks to Megan’s tireless project management.

I guess it’s pretty obvious to most people (though for some reason I didn’t get it) that the physical environment you work in must impact on the way that you feel while you work but the fact is that I didn’t notice the creeping clutter. The extra space has been rejuvenating.  I’m enjoying the panoramic view of the Ipswich railway line. Sure, it’s not a view of a park, the ocean or distant misty mountains but it has its moments. So far I’ve seen electric commuter trains,a  double diesel locomotive pulling endless platforms laden with containers a country train and believe it or not a steam train, which I suspect must have been rolling to the Ipswich train museum.

Life isn’t all office moves and trainspotting though.  On a more academic note I very much enjoyed attending an LESANZ presentation yesterday morning at Customs House.  Professor Mark Harvey, Deputy Vice Chancellor Research & Innovation at the University of Southern Queensland spoke on valuing and value adding for intellectual property in start up companies.  Mark’s presentation was very interesting and informative, He has been involved in IPOs and deal making first hand and had some fascinating war stories. Good too to catch up with some great people I haven’t had an opportunity to see for quite a while including Ernst Graf from FAK and Wayne Slater from Gateway.