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Information about filing and validity requirements in Australia and New Zealand for foreign applicants

Novelty – Patents

Australia requires absolute novelty, that is, the matter claimed must be new as of the priority date when compared to any publication, use, sale or public acts anywhere in the world. A one year grace period applies to disclosures derived from the applicant or their predecessors, up to the date of filing the application in Australia, or the date the PCT application was filed.

New Zealand applies local novelty – only printed publications made available to the public in New Zealand, or use, sale or public acts in New Zealand are relevant. Note that this may include on-line material. No grace period applies.

Novelty – Designs

Australia applies relative novelty, that is, the matter claimed must be new as of the priority date when compared to any publications anywhere in the world, or to use, sale or public acts in Australia. However, if there is an underlying artistic work under the Copyright Act 1968 (for example, technical drawings), then in some circumstances it is still possible to obtain valid protection despite publication having occurred. Please seek specific advice if this may be applicable.

New Zealand applies local novelty, as for patents.

Deadline to claim priority – convention filings

The corresponding Australian or New Zealand application must be filed within 12 months of the filing date of the first application for a patent in a convention country (as per the Paris Convention). Convention countries include Paris convention and WTO members, as well as certain other states (for example Taiwan – ROC and Pakistan).

In both Australia and New Zealand, it is possible in some circumstances where the deadline has been missed to obtain an extension of time to claim convention priority, for example where the failure to file a convention application in a timely way is the result of an error or omission by the applicant, or results from circumstances beyond the control of the applicant.

Deadline to enter national phase from PCT

The deadline to enter national phase in both New Zealand and Australia is 31 months from the earliest priority date claimed, whether or not a Demand has been filed. Extension of time provisions are available in some circumstances, as outlined under convention filings.

Minimum Filing Requirements for Patent Applications in Australia and New Zealand

  1. Name and address of applicant
  2. Standard and Innovation Patents
    Specification and claims in English and drawings if appropriate
    Priority documents and translations if required can be filed later with additional costs
  3. PCT National Phase - Filing particulars to identify PCT application, a verified English translation if necessary and advice as to whether a Chapter I or Chapter II application.
  4. Whilst not essential in Australia, the name(s) and address(es) and nationalities of the inventor(s) and details of how the applicant is entitled to apply if they are not the inventor(s) is required for New Zealand.
  5. A Power of Attorney is not required for filing an application

Emergency Filing of Convention Patent Applications in Australia

Where it is not possible to transmit documents in time, a filing date can be secured by advising us of the particulars of the basic convention application, the title and the main claim. Amendment to formalize the application can then follow.

Minimum Filing Requirements for Trade Marks in Australia and New Zealand

  1. Name, address and place of incorporation of applicant.
  2. Details of mark.
  3. List of goods and/or services.
  4. Convention details if any.
  5. For New Zealand advice that the mark is proposed to be used or is being used by the applicant (or with the applicant’s consent) in relation to the stated goods and services used in New Zealand
  6. A Power of Attorney is not required for filing an application

Minimum Filing Requirements for Designs in Australia and New Zealand

  1. Name and address of applicant.
  2. Set of representations (preferably drawings).
  3. Convention priority details (if any).
  4. Whilst not essential in Australia, the name and nationality of the authors and entitlement of the applicant to the design is required for New Zealand.
  5. A Power of Attorney is not required for filing an application