BUSINESS BRIEF: AUSTRALIA
Patents Securing rights Patent rights are secured in Australia by filing appropriate documents and fees at the patent office.
Appropriate coverage Te most appropriate patent coverage depends on various factors, including where manufacturing and significant markets for the invention lie, and the amount of funding available for patenting.
Registration costs Approximate charges (including official fees) for the major steps:
• Filing a standard patent application or entering the national phase: €1,150 (US $1,500);
• Requesting examination: €950 (US $1,240); • Examination: from €900 (US $1,180); and • Acceptance and grant: €850 (US $1,100) plus excess claims fees over the first 20 claims.
Annuities apply from the fiſth year aſter filing an application. Additional charges oſten apply, and charges may vary.
Costs of defending a patent Costs associated with defending a patent vary. Defending opposition proceedings can range from €10,000 to €50,000 (US $13,100 to $65,400) or more. Defending court proceedings is more expensive.
Further information Drawing on resources from our firm’s information services group, we assist clients to find information on existing patents. Te official patents database is AusPat, which is accessible from
http://www.ipaustralia.gov.au/auspat/
Unique to Australia Inventive step requirements: At present, Australia’s inventive step laws are more complex than those of many jurisdictions. It is possible, for example, to argue that a prior art citation should not have been raised
because the skilled person would not have ascertained, understood or regarded the citation as relevant.
Adding embodiments or examples to the description: if new examples or embodiments are available which support the claims, they can usually be added to the description before examination. At present, it is merely necessary that the amended specification claims matter ‘in substance disclosed’ in the specification as filed.
Key threats Infringement is a key threat to patent owners. Te owner of a granted patent may write to an infringer threatening legal action if the infringing conduct does not cease. Legal action may be required to stop recalcitrant infringers. Potential remedies include interlocutory injunctions, and an account of profits or damages.
Legislative changes in the past 12 months Significant changes to Australia's patent laws were enacted on April 15, 2012. Te changes will increase patentability requirements in the following areas:
• Inventive step: making it easier for examiners to raise and combine citations;
• Enablement: requiring enablement substantially across the full scope of the claims;
• Support: adopting a European-style claim basis requirement; and
• Utility: adopting a US-style requirement of a specific, substantial and credible use.
Most of the changes will not come into effect until April 15. Applicants who are considering filing, or have filed, applications in Australia, should speak with their Australian attorneys about how best to manage the changes.
Trademarks Securing rights Trademark rights are secured both through use under the common law, and via statutory protection through registration. Common law rights protect
110 World Intellectual Property Review Annual 2012
the goodwill associated with a trademark, and registration gives the trademark owner the exclusive right to use, and authorise use of, the mark in respect of the goods and/or services for which it is registered.
Registration costs Approximate charges (including official fees) for the major steps: • Filing an application: €540 (US $706) for the first class, €390 (US $510) for each additional class;
• Reporting examination report with advice: from €210 (US $275);
• Responding to examination report: from €250 (US $330); and
• Acceptance and grant: €630 (US $825) for the first class, €460 (US $600) for each additional class.
A registered trademark must be renewed every 10 years.
Key threat Te key trademark threat in Australia is the importation of counterfeit products being sold locally. Te best strategy for dealing with infringement is to enforce rights against third party infringers, and to monitor counterfeiting activity. With most counterfeit products imported into Australia, trademark owners can lodge a Custom Notice of Objection based on registered trademark rights, allowing customs to seize goods and seek forfeiture by the importer. Absent forfeiture, trademark owners should take action against infringers to stop counterfeit products from passing the border and being sold.
Common mistakes Some common mistakes are (i) failing to properly ‘use’ a trademark in respect of its registered goods and/or services; (ii) failing to implement a cohesive policing and enforcement strategy; and (iii) failing to register a common law trademark.
Legislative changes in the past 12 months Tere are no recent substantive changes to Australian trademark laws. However, two pending bills are
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