Information for Overseas Associates
SALIENT FEATURES OF AUSTRALIAN PATENT LAW
Absolute novelty
Australian patent law applies a standard of absolute novelty to patent applications filed in Australia. Any disclosure anywhere in the world, whether by acts or by documentary publication, before the priority date of the claim under consideration can destroy the novelty of a claim.
Grace period
Australian patent law allows a 12 month grace period in respect of disclosures by the Applicant. The grace period excuses disclosures by the Applicant carried out within 12 months prior to the date of filing a complete application. However the grace period has limited effect and should only be relied on as a last resort.
Innovation patents
Australian patent law provides for innovation patents as well as standard patents. Innovation patents are characterized by the fact that they only require an innovative step rather than an inventive step which applies a lower standard of inventiveness. Innovation patents also have a shortened term of 8 years and are limited to five claims in total.
Pre grant opposition
Australian patent law provides for third parties to file a pre-grant opposition to the grant of an accepted patent application. The grant of the patent can be opposed inter alia on the grounds of lack of novelty and lack of an inventive step.
SALIENT FEATURES OF AUSTRALIAN TRADEMARK LAW
Proprietorship
Trade mark rights arise in Australia by:
- registration under the Australian Trade Marks Act; and
- use at common law.
However, rights obtained by use are limited and depend upon the extent of use and reputation. They may also be geographically limited.
Company, business and domain name registration do not give rise to trade mark rights.
Third Party Oppositions
Australian trade mark law provides for opposition to trade mark applications by third parties. Oppositions must be filed within 3 months of advertisement of acceptance of a trade mark application. Therefore, it is important to watch for conflicting trade marks for opposition purposes.
Removal for non-use
If a trade mark is not used for a continuous 3 year period, the registration may become vulnerable to removal for non-use.
SALIENT FEATURES OF AUSTRALIAN DESIGNS LAW
Registration of purely functional designs
Australian designs law permits the registration of purely functional designs.
Term of an Australian design
Australian designs have a term of 10 years from the filing date thereof.
Registrability requirement for designs
To be registrable a design must be new and distinctive over the prior art base. The prior art base includes designs publicly used in Australia and designs published in a document any where in the world. A design disclosed in a design application, not yet published, with an earlier priority date than the design in question is also potentially citable against the design.
Registration without Certification
Australian design applications are registered without an investigation into the validity of the designs being conducted.
Post Registration Certification of a registered Design
An owner of a design registration can request substantive examination and certification of the design after registration of the design. Only once the design is certified does it become an enforceable right that can be asserted against third parties.
