Information for Associates

Associates are patent and or trade mark attorneys registered to practice in other countries.  In order to file and prosecute patent, design and trade mark applications in Australia and New Zealand, it is a legal requirement that only Australian and New Zealand registered patent and trade mark attorneys file the necessary documentation with IPAustralia or IPONZ on behalf of the Associates and their clients. To assist in this process we provide the minimum filing requirements for patents, designs and trade marks.

FILING REQUIREMENTS

AUSTRALIAN FILINGS

AUSTRALIAN TRADE MARKS

Minimum Filing Requirements

  1. Name and address of the applicant(s).
  2. Details of the mark(s).
  3. Description of goods and/or services.
  4. Country, number and date of any convention priority claimed. (The applicant has 2 days from the filing date in which to claim convention priority if not claimed when application was filed.)

Other Requirements

  1. Certified copy of priority application prior to acceptance may be required.

AUSTRALIAN PATENTS

PCT NATIONAL PHASE ENTRY

(within 31 months from priority date)

Minimum Filing Requirements (urgent cases)

  1. International number of PCT application.
  2. A copy of the front page of the published PCT pamphlet containing information on the applicant and application.
  3. Verified English translation of the PCT specification if the original specification was filed in a language other than English.

Other Requirements

  1. A copy of the published International application with specification, claims and drawings.
  2. Verified English translation of priority document/basic application if that document is not in English.
  3. Copy of the International search report, examination report, and any amendments to the specification or claims.
  4. Notice of Entitlement can be prepared and filed prior to acceptance.
  5. Name of applicant(s) in the priority document if claiming convention priority.
  6. Filing a copy of any micro-organism deposit receipt.

STANDARD PATENT APPLICATION – NON CONVENTION / CONVENTION

Minimum Requirements (urgent cases)

  1. Name and address of the applicant(s) and name of the inventor(s).
  2. A copy of the specification (and claims) in English (a faxed copy is acceptable).
  3. If convention priority is claimed, the number, priority date and country of basic application and the name and address of the applicant(s)

Other Requirements

  1. A copy of any priority application.
  2. Verified English translation of priority document/basic application if that document is not in English.
  3. Details of how the applicant(s) have derived rights in the invention in order to prepare and file a Notice of Entitlement prior to acceptance.
  4. Filing a copy of any micro-organism deposit receipt.

AUSTRALIAN DESIGN

Minimum Filing Requirements (urgent cases)

  1. Name and address of the applicant(s).
  2. A set of representations of the design (drawings or photographs) showing all features of the article.
  3. Statement of Newness and Distinctiveness
  4. If convention priority is claimed, the date, number and country of the basic application.

Other Requirements

  1. Five sets of formal representations of the design (these views may be drawings or photographs).
  2. If convention priority is claimed, a certified copy, and verified English translation if appropriate, of the basic application. These documents are required if examination is requested.

NEW ZEALAND FILINGS

NEW ZEALAND TRADE MARK

Minimum Filing Requirements (urgent cases)

  1. Name of applicant(s).
  2. Details of the mark(s).
  3. List of goods and/or services.

Other Requirements

  1. Name, address and nationality of applicant(s).
  2. Details of the mark(s) and whether in use in New Zealand.
  3. Date and country of any convention priority claimed.
  4. Convention priority document, if applicable.
  5. Authorisation form signed by the applicant

NEW ZEALAND PATENT

PCT NATIONAL PHASE ENTRY

(within 31 months of priority date)

Minimum Filing Requirements (urgent cases)

  1. International number of PCT application.
  2. A copy of the front page of the published PCT pamphlet containing information on the applicant and application.

Other Requirements

  1. Published International application with specification, claims and drawings.
  2. Verified English translation of specification and claims if the International application was not filed in English. Additional fees are payable if the verified translation is not filed within three months.
  3. International search report, examination report, and any amendments to the specification or claims.
  4. Authorisation form signed by the applicant. No need for notarisation or legislation. Corporate applications to be signed by an executive officer stating their capacity, eg. Director, Secretary, Vice President, etc.

STANDARD PATENT APPLICATION

(Both non-convention and convention)

Minimum Requirements (urgent cases)

  1. Name and address of the applicant(s).
  2. A copy of the specification (and claims) in English (a faxed copy is acceptable).
  3. If convention priority is to be claimed, the date and country of basic application.

Other Requirements

  1. Name, address and nationality of the applicant(s) and inventor(s).
  2. Date, country and applicant for any convention priority claimed.
  3. Convention priority documents (and certified English translation if applicable).
  4. Authorisation Form

NEW ZEALAND DESIGN

Minimum Filing Requirements (urgent cases)

  1. Name of the applicant(s).
  2. A copy of each view of the design.
  3. Statement of novel features to be claimed.
  4. If convention priority is claimed, the date, number and country of the basic application.

Other Requirements

  1. Name, address and nationality of the applicant(s).
  2. Five copies of each view of the design (these views may be drawings or photographs).
  3. Certified copy, and verified English translation if appropriate, of the basic application.

NB: With a convention application, the certified copy to be filed within three months of the date of application. Extensions of time are available.

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