PCT Applicant's Guide Australia - Valid as from 1 Oct 2024

GENERAL INFO
RO
ISA
IPEA
BIO
NATIONAL CHAPTER

Applicable as from 1 October 2024

(published on 20 September 2024)

Summary of latest changes in this version
RO: RO fees
ISA: ISA fees
Summary of requirements for entry into the national phase: National fees
The procedure in the national Phase: Various
Annexes: Various

Consult the full list of the changes

Previous version(s): You can consult previous versions of the document. The only applicable version is the current version.
15 Sep 2023, 1 Nov 2023, 1 Jan 2024, 18 Apr 2024, Current Version

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau: pct.guide@wipo.int.

List of abbreviations used in this document:

Office: Australian Patent Office

APA: Australian Patents Act

APR: Australian Patents Regulations

Sec.: Section of the Patents Act

Reg.: Regulation of the Patents Regulations

List of currencies used in this document:

AUD (Australian dollar), CHF (Swiss franc), EUR (Euro), KRW (Korean won), NZD (New Zealand dollar), SGD (Singapore dollar), USD (US dollar), ZAR (South African rand)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

Rule 23bis.2(e)
Refer to the full list.

Office Closed dates

The Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Contracting State:

Australia

Two-letter code:

Name of Office:

Australian Patent Office

Location:

Discovery House
47 Bowes Street
Phillip
Canberra A.C.T. 2606
Australia

Mailing address:

P.O. Box 200
Woden
A.C.T. 2606
Australia

Telephone:

Local
1300 65 10 10

International
(61-2) 622 236 26

E-mail:

pct@ipaustralia.gov.au

Website:

http://www.ipaustralia.gov.au

Facsimile:

None

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

Does the Office send notifications via e-mail in respect of international applications?

Yes

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Yes

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

For further details on how to request this Office to make applications available to DAS, refer to https://www.ipaustralia.gov.au/patents/applying-patent/international-application-process/applying-international-application/priority-document-access-service-das

Yes, the Office is prepared to allow applicants to make national and international applications filed in electronic form available to the WIPO DAS

Competent receiving Office(s) for international applications filed by nationals or residents of this State:

AU,

Does national legislation restrict the filing of international applications with foreign Offices?

Refer to the Office

Competent designated (or elected) Office(s) for this State:

Refer to corresponding National Phase.

Types of protection available via the PCT:

Patents,

Patents of addition

Payment methods accepted by the Office:

(i) All fees must be paid to the Australian Patent Office

(ii) National fees must be paid by credit card, accounts for selected services, cash, cheque, money order, EFTPOS, EFT or direct debit in Australian dollars. Payments by bank transfer should be made to the following bank:

Beneficiary’s name
IP Australia Official Departmental Account

Bank name
National Australia Bank

Bank Account No.
082-926 868711229

Bank Address
Woden Shopping Square ACT 2606

BIC/SWIFT code
NATAAU3303M

Availability under the national law for an international-type search (PCT Article 15):

Regulation 3.14A of the Patents Regulations

Provisional protection after international publication:

The applicant enjoys the rights defined in Section 57 of the Patents Act 1990 from the date on which the international application is published under PCT Article 21 or otherwise becomes open to public inspection under Section 56A of the Patents Act 1990 and Regulation 4.4 of the Patents Regulations (the rights are generally the same as he would have had if the patent had been granted on the day that the specification is published except that he cannot institute proceedings for infringement until the patent has been granted)

Information of interest if this Contracting State is designated (or elected)

Time when the name and address of the inventor must be given:

May be in the request or must be furnished within two months from the date of invitation

Are there special provisions concerning the deposit of microorganisms and other biological material?

Yes, refer to Annex L.

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

Australia

Language in which international applications may be filed:

English

Language accepted for language-dependent free text in the sequence listing:

Same as above

Language in which the request may be filed:

Same as above

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the RO”).

Where the international application contains a sequence listing as a separate part of the description, this should be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

For the relevant notifications by the Office, refer to the Official Notices (PCT Gazette) dated 28 July 2016, pages 163 et seq., 21 July 2022, page 185 and 7 September 2023, page 174.

Yes, the Office accepts electronic filing via ePCT-Filing

Does the receiving Office accept the submission of pre-conversion documents and, if yes, in which format (Section 706 of the PCT Administrative Instructions)?

Yes, any format

Does the receiving Office accept incorporation by reference (PCT Rule 20.6)?

Yes

Does the receiving Office accept the submission of color drawings on an informal basis and transmit them to the International Bureau?

Yes, without any conditions

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Yes,

the Office applies both the “unintentional” and the “due care” criteria to such requests

Competent International Searching Authority:

AU,

Competent International Preliminary Examining Authority:

AU,

Fees payable to the RO:

Transmittal fee:

None

International filing fee:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

2,274 AUD

Fee per sheet in excess of 30:

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

26 AUD

Reductions (under Schedule of Fees, item 4):

Electronic filing (the request in character coded format):

342 AUD

Electronic filing (the request, description, claims and abstract in character coded format):

513 AUD

Search fee:

Refer to
Annex D(AU)
Annex D(KR)

Fee for priority document (PCT Rule 17.1(b)):

50 AUD

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)):

200 AUD

Is an agent required by the receiving Office?

Who can act as agent?

Any person registered to practice as a patent attorney before the Office

Waiver of power of attorney:

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where there is an unresolved dispute about who is the agent representing the applicant(s)

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Where there is an unresolved dispute about who is the agent representing the applicant(s)

Annex D - International Searching Authority

International Searching Authority competent for the following Receiving Offices:

AU,

BN,

GH,

ID,

IN,

IQ,

JM,

JO,

KE,

KR,

LR,

MU,

MY,

NZ,

OM,

PG,

PH,

SG,

TH,

US,

VN,

ZA,

Fees payable to the ISA:

Search fee (PCT Rule 16):

This fee is payable to the receiving Office in the currency or one of the currencies accepted by it.

2,200 AUD

1,287 CHF

1,336 EUR

2,037,000 KRW

2,357 NZD

1,930 SGD

1,407 USD

26,920 ZAR

Additional search fee (PCT Rule 40.2):

This fee is payable to the International Searching Authority and only in particular circumstances.

2,200 AUD

Fee for copies of documents cited in the international search report (PCT Rule 44.3):

per document 50 AUD

This fee is capped at 200 AUD

How to obtain copies:

The Authority provides applicants and designated (elected) Offices with a copy of each document cited in the international search report upon request, subject to the payment of the fee mentioned below

Documents can be requested through eServices at:
http://portal.ipaustralia.gov.au/login

Fee for copies of documents contained in the file of the international application (PCT Rule 94.1ter):

per document 50 AUD

Protest fee (PCT Rule 40.2(e)):

None

Late furnishing fee (PCT Rule 13ter.1(c)):

None

Conditions for refund and amount of refund of the search fee:

Money paid by mistake, without cause, or in excess, will be refunded

Where the international application is withdrawn or is considered withdrawn, under PCT Article 14(1), (3) or (4), before the start of the international search:
refund of 100%

Where the Authority benefits from an earlier search, depending upon the extent of the benefit:
refund of up to 50%

Where the Office issues a declaration that no international search report will be established under PCT Article 17(2)(a):

refund of 1,500 AUD

Languages accepted for international search:

English

Does the Authority accept informal comments on earlier search results where an international application claims priority from an earlier application already searched by this Authority?

Types of physical media accepted for the furnishing of nucleotide and/or amino acid sequence listings:

The entire printable copy of the sequence listing and identifying data should be contained within one text file (for applications with a filing date prior to 1 July 2022, WIPO Standard ST.25 applies) or one XML file (for applications filed on or after 1 July 2022, WIPO Standard ST.26 applies) on a single standard (ISO 9660) CD-ROM, CD-R, DVD or DVD-R.

Subject matter that will not be searched:

The subject matter specified in items (i) to (vi) of PCT Rule 39.1 with the exception of any subject matter searched under the patent grant procedure in accordance with the provisions of Australian patent law

Waiver of power of attorney:

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where there is an unresolved dispute about who is the agent representing the applicant(s)

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Where there is an unresolved dispute about who is the agent representing the applicant(s)

Annex E - International Preliminary Examining Authority

International Preliminary Examining Authority competent for the following Receiving Offices:

AU,

BN,

GH,

ID,

IN,

IQ,

JM,

JO,

KE,

KR,

LR,

MU,

MY,

NZ,

OM,

PG,

PH,

SG,

TH,

US,

VN,

ZA,

Fees payable to the IPEA:

Preliminary examination fee (PCT Rule 58):

This fee is payable to the International Preliminary Examining Authority.

590 AUD

— Where the international search report was not issued by the Australian Patent Office

820 AUD

Additional preliminary examination fee (PCT Rule 68.3):

This fee is payable to the International Preliminary Examining Authority and only in particular circumstances.

590 AUD

Handling fee (PCT Rule 57.1):

This fee is payable to the International Preliminary Examining Authority. It is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

342 AUD

Fee for copies of documents cited in the international preliminary examination report (PCT Rule 71.2):

per document 50 AUD

This fee is capped at 200 AUD

How to obtain copies:

The Authority provides applicants and elected Offices with a copy of each document cited in the international preliminary examination report upon request, subject to the payment of the fee mentioned above

Documents can be requested through eServices at:
http://portal.ipaustralia.gov.au/login

Fee for copies of documents contained in the file of the international application (PCT Rule 94.2):

per document 50 AUD

Protest fee (PCT Rule 68.3(e)):

None

Late furnishing fee (PCT Rule 13ter.2):

None

Conditions for refund and amount of refund of the preliminary examination fee:

Money paid by mistake, without cause, or in excess, will be refunded

In the cases provided for under PCT Rule 58.3:
refund of 100%

If the international application or the demand is withdrawn before the start of the international preliminary examination:
refund of 100%

Languages accepted for international preliminary examination:

English

Subject matter that will not be examined:

The subject matter specified in items (i) to (vi) of PCT Rule 67.1 with the exception of any subject matter examined under the patent grant procedure in accordance with the provisions of Australian patent law

Are there any restrictions with regard to the competence of the Authority acting as an International Preliminary Examining Authority?

Waiver of power of attorney:

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where there is an unresolved dispute about who is the agent representing the applicant(s)

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Where there is an unresolved dispute about who is the agent representing the applicant(s)

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf (and the detailed requirements for each institution at: https://www.wipo.int/budapest/en/guide/section_d/subsection_c.html)

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

None

— any additional indications:

At the time of filing (as part of the application)

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

To the extent available to the applicant, relevant information on the characteristics of the microorganism

Additional information

An applicant may give notice that the furnishing of a sample of a microorganism shall only be effected prior to the grant of a patent, or to the lapsing, refusal or withdrawal of an application, to a person who is a skilled addressee without an interest in the invention (Regulation 3.25A(2) of the Australian Patents Regulations). The applicant must give notice directly to the Australian Patent Office before the application is made available to the public (normally the international publication date).

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

Under PCT Article 22(3): 31 months from the priority date
Under PCT Article 39(1)(b): 31 months from the priority date

Does the Office permit reinstatement of rights (PCT Rule 49.6)?

Yes, the Office permits reinstatement of rights under the “due care” criterion.

Fee for reinstatement

100 AUD

Translation of international application required into (one of) the following language(s):

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

English

Required contents of the translation for entry into the national phase:

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

Under PCT Article 22: Description, claims (if amended, both as originally filed and as amended), any text matter of drawings

Under PCT Article 39(1): Description, claims, any text matter of drawings (if any of those parts has been amended, only as amended by the annexes to the international preliminary examination report)

Is a copy of the international application required in particular circumstances?

A copy is required only if the applicant expressly requests an earlier start of the national phase under PCT Article 23(2) at a time when the applicant has not received Form PCT/IB/308 and the Office has not received a copy of the international application from the International Bureau under PCT Article 20

Does the Office accept color drawings under its national law?

Yes, without any conditions

National fees:

Filing fee:

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

For details, refer to: https://www.ipaustralia.gov.au/patents/timeframes-and-fees#fx-tabs-0-panel-0

— Where the following preferred means for specific transactions are used: Online Services (eServices) or Business to Business (B2B).

400 AUD

— Where other means such as mail or at a counter are used for specific transactions.

600 AUD

Exemptions, reductions or refunds of fees:

None

Special requirements of the Office (PCT Rule 51bis):

If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Name of the inventor if it has not been furnished in the “Request” part of the international application

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Statement or notice as to the applicant’s entitlement to apply for and be granted a patent

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Statement or notice as to the applicant’s entitlement to claim priority of the earlier application

This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Address for service in Australia or New Zealand (but no representation by an agent is required)

Verification of translation

A verified translation is only required upon request by the Commissioner.

Who can act as agent?

Any person registered to practice as a patent attorney before the Office

Does the Office accept the effect of restoration of the right of priority by the receiving Office (PCT Rule 49ter.1)?

Yes

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the Office applies national requirements to such requests

The procedure in the national Phase

AU.01 TRANSLATION (VERIFICATION)

APR Reg. 3.5AC(9), APR Reg. 3.5AF(2D), 1.3 definition of “certificate of verification”
A verification of the translation of the international application or of any amendments under PCT Articles 19 or 34 need only be furnished to the Office if the Commissioner specifically requires the applicant to do so. This only occurs if there is a reasonable belief that the translation into English does not accurately reflect the document in its original language. The required certificate of verification of the translation of the international application consists of a simple signed and dated statement, which can be made by any person.

AU.02 TRANSLATION (CORRECTION)

APR Reg. 3.5AC(8), APR Reg. 3.5AC(9)(a), APR Reg. 3.5AF(2C), APR Reg. 3.5AF(2D)(a)
Errors in the translation of the international application can be corrected with reference to the text of the international application as filed (refer to National Phase, paragraphs 6.002 and 6.003). This can be done when the applicant becomes aware of an error or omission, or in response to the Commissioner requiring verification of a translation.

AU.03 FEES (MANNER OF PAYMENT)

The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex AU.I.

AU.04 ADDRESS FOR SERVICE

APR Reg. 3.2C(2)(a)(i)
An applicant, irrespective of whether or not he is a national of or a resident in Australia, is not required to be represented by an agent, but he is required to have an address for service (of notices and other communications) in Australia or New Zealand. The applicant must supply such an address in order to continue proceedings before the Office. Any applicant may be represented by a patent attorney authorized to practice before the Office and the address for service should normally be that of a registered patent attorney. A list of registered patent attorneys is available upon request from the Office.

AU.05 RENEWAL FEE

APA Sec. 142(2)(d), APA Sec. 143(a), APR Reg.13.3, APR Reg.13.6, APR Reg.22.2
A continuation (renewal) fee must be paid to maintain the application. The first continuation fee falls due four years from the international filing date (fourth anniversary fee); thereafter a continuation fee becomes due on each anniversary of the international filing date. Payment can be made at any time up to the due date or together with the payment of a fee for extension of time, within six months from the final date. The amounts of the continuation fees and of the fees for extension of time are indicated in Annex AU.I.

AU.06 REQUEST FOR EXAMINATION

APA Sec. 44, APA Sec. 45, APR Reg. 3.15
The Office will grant a standard patent only after examination as to patentability, the procedure for which is started only upon request.

AU.07 TIME LIMIT FOR REQUESTING EXAMINATION

APR Reg. 3.15, APR Reg. 3.16
Examination must be requested within five years from the international filing date or, where the Office directs the applicant to request examination, within two months of the date of the notice of the Office to that effect.

AU.08 FEE FOR REQUESTING EXAMINATION

APR Reg. 22.2, APR Reg. 22.2C
The request for examination is only effective if a fee for requesting examination has been paid. The amount of this fee is indicated in Annex AU.I.

AU.09 TIME LIMIT TO HAVE AN APPLICATION ACCEPTED

APA Sec. 142(2)€, APR Reg. 13.4
An application for which an examination request has been made has to have been accepted within 12 months from the date of the first examination report.

AU.09A EXCESS CLAIMS FEE AT FIRST EXAMINATION REPORT

APR 22.2, APR 22.2EB, APR Schedule 7, item 203A
An excess claims fee is payable if the application has more than 20 claims at the first examination report date. The claims for reckoning the fee are not fixed at entry into the national phase but are affected by claims added or removed by amendment of the application up to the first examination report date. If the fee is not paid within one month of the first examination report date, the application lapses. It can be restored at any time before the time limit to have the application accepted, by paying the amount of the excess claims fee, without needing to seek an extension of time. The amount of the fee and how it is reckoned is indicated in Annex AU.I.

AU.10 ACCEPTANCE FEE INCLUDING ADJUSTING AMOUNT FOR EXCESS CLAIMS

APR 22.2, APR 22.2I, APR Schedule 7, item 213
A fee is required to be paid upon acceptance of the application. It can include an adjusting amount for claims added between the first examination report date and acceptance of the application. This is if the maximum number of claims at any time in that period exceeds 20 claims. If the acceptance fee is not paid within three months of the publication of the notice of acceptance, the application lapses. Restoring the application requires the applicant to obtain an extension of time to pay the acceptance fee. The amount of the fee and how it is reckoned is indicated in Annex AU.I.

AU.11 ENTITLEMENT

APR Reg. 3.15(2)
All requests for examination must include a statement or notice as to the applicant’s entitlement to apply for and be granted a patent, and to claim priority of the earlier application. These requirements may be taken to have been met if the applicant includes in the request the relevant declarations in accordance with PCT Rule 4.17.

AU.12 PRIORITY DOCUMENT (TRANSLATION)

APA Sec. 43AA, APR Reg. 3.14D, APR Reg. 22.15A
A verified translation into English (refer to paragraph AU.01) of any priority document need only be furnished to the Office if the Commissioner specifically requests the applicant to do so. This will only occur when the translation is necessary to determine the validity of the application.

Verification of the translated priority document is only required to be furnished to the Office if the Commissioner specifically requires the applicant to do so. This only occurs if there is a reasonable belief that the translation into English does not accurately reflect the priority document in its original language. The required certificate of verification of the translation of the priority document consists of a simple signed and dated statement, which can be made by any person.

AU.13 AMENDMENT OF THE APPLICATION; TIME LIMITS

PCT Art. 28, PCT Art. 41, APA Sec. 102, APA Sec. 104, APR Chapter 10
The applicant may make the following modifications to his application before the Office (subject, in the case of voluntary amendment, to the payment of the fee for voluntary amendments indicated in Annex AU.I):

(i) prior to acceptance:

— correction of clerical errors and obvious mistakes;

— such modifications as do not result in the claiming or disclosure of new matter (beyond the disclosure of the international application as filed);

(ii) after acceptance:

— correction of clerical errors and obvious mistakes;

— such modifications as do not result in the claiming or disclosure of new matter (beyond the disclosure of the international application as filed) and do not broaden the scope of the claims existing before the modifications.

AU.14 REVIEW UNDER ARTICLE 25 OF THE PCT

PCT Art. 25, PCT Rule 51, APA Sec. 10, APR Reg. 3.5AB
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase. Before any adverse decision is made, the applicant is always afforded the opportunity of being heard. Review of an adverse decision can be obtained from the Federal Court of Australia.

AU.15 EXCUSE OF DELAYS IN MEETING TIME LIMITS

PCT Art. 24(2), PCT Art. 48(2)
Reference is made to paragraphs 6.022 to 6.027 of the National Phase.

AU.16 EXTENSION OF TIME LIMITS

APA Sec. 223, APR Reg. 8.3(4), APR Reg. 22.11
If, due to an error or omission on the part of the applicant, his agent or attorney, or due to circumstances beyond the control of the person concerned, the applicant has failed to observe a time limit which is prejudicial to his rights, or the Commissioner is satisfied that the person took due care as required by the circumstances, to ensure the doing of the act within that time, he may request the Office to extend the time limit even though that time has already expired. The request must be presented in writing, and establish the facts on which the request is based in a declaration and also must be accompanied by a fee (for the amount of the fee, refer to Annex AU.I).

AU.17 RESTORATION OF THE RIGHT OF PRIORITY

PCT Rule 49ter(f), APA Sec. 223
A request for restoration of the right of priority will be treated under national law requirements, at the option of the applicant, as an application for an extension of time on the basis of the relevant act not being done despite due care, not being done due to circumstances beyond the control of the person concerned or because of an error or omission on the part of the person concerned or by his or her agent or attorney. Fees and other requirements associated with the request vary according to the criterion against which it is made. A request for restoration should be presented in writing, should indicate the criterion against which the request is made and be accompanied by the relevant fee (refer to “Fee for extension of time limit” in Annex AU.I). Preferably it should also be accompanied by a declaration setting out the circumstances and facts on which the request is based.

Annexes

Annex AU.I - Fees

The first amount is applicable where the following preferred means for specific transactions are used: Online Services (https://portal.ipaustralia.gov.au/login) or Business to Business (B2B).

The amount in parentheses is applicable where other means such as mail or at a counter are used for specific transactions.

For details, refer to https://www.ipaustralia.gov.au/patents/timeframes-and-fees#fx-tabs-0-panel-0.

Standard patent applications

Filing fee:

400 AUD

(600 AUD)

— national phase entry of a PCT application under section 29A of the Australian Patents Act

400 AUD

(600 AUD)

Request for examination fee:

For examination under section 45 of the Australian Patents Act (normal examination):

(a) if the application is a PCT application for which the Australian Patent Office has issued an international preliminary examination report under PCT Article 35, other than a report under the PCT Regulations Rule 44bis.1

350 AUD

(b) all other applications

550 AUD

Excess claims at first report:

Fee payable if there are more than 20 claims in the application at its first examination report date:

(a) amount for each of the 21^st to the 30^th claims

125 AUD

(b) amount for each claim in excess of 30

250 AUD

Fee for acceptance of a patent request and complete specification:

Minimum payable in all cases

300 AUD

Adjusting amount for claims added between first report and acceptance – if the maximum number of claims at any time in that period exceeds 20 claims

(a) amount for each of the 21^st to the 30^th claims added

125 AUD

(b) amount for each claim added in excess of 30 claims

250 AUD

Continuation/renewal fees: (becoming payable on each anniversary of the international filing date from the 4^th onwards):

— on the 4^th anniversary

300 AUD

(350 AUD)

— on the 5^th anniversary

315 AUD

(365 AUD)

— on the 6^th anniversary

345 AUD

(395 AUD)

— on the 7^th anniversary

380 AUD

(430 AUD)

— on the 8^th anniversary

420 AUD

(470 AUD)

— on the 9^th anniversary

465 AUD

(515 AUD)

— on the 10^th anniversary

540 AUD

(590 AUD)

— on the 11^th anniversary

645 AUD

(695 AUD)

— on the 12^th anniversary

780 AUD

(830 AUD)

— on the 13^th anniversary

945 AUD

(995 AUD)

— on the 14^th anniversary

1,140 AUD

(1,190 AUD)

— on the 15^th anniversary

1,385 AUD

(1,435 AUD)

— on the 16^th anniversary

1,675 AUD

(1,725 AUD)

— on the 17^th anniversary

2,010 AUD

(2,060 AUD)

— on the 18^th anniversary

2,390 AUD

(2,440 AUD)

— on the 19^th anniversary

2,815 AUD

(2,865 AUD)

Fee for extension of time limit:

(a) where there is an error or omission on the part of the person concerned or his agent or attorney—for each or part of a month

100 AUD

(b) for circumstances beyond the control of the person concerned—application for extension of time

100 AUD

(c) where the Commissioner is satisfied that the person concerned took due care, as required by the circumstances, to ensure the doing of the act within that time—for each or part of a month

100 AUD

(d) to pay continuation fee if the fee is not paid on or before the anniversary but is paid within 6 months of the anniversary—for each or part of a month for which the time is extended

100 AUD

Fee for voluntary amendments before request for examination is filed or after acceptance

250 AUD

Additional fee for voluntary amendments after acceptance, if the specification as proposed to be amended has more than 20 claims, and the effect of the amendment is to increase the number of claims, for each additional claim

250 AUD

The complete list of national fees for the Office is in Part 2 in Schedule 7 to the Australian Patents Regulations

How can payment of fees be effected?

(i) All fees must be paid to the Australian Patent Office

Beneficiary’s name
IP Australia Official Departmental Account

Bank name
National Australia Bank

Bank Account No.
082-926 868711229

Bank Address
Woden Shopping Square ACT 2606

BIC/SWIFT code
NATAAU3303M

Forms

Please refer to the Office.

Change(s) as of 1 October 2024 (Highlighted in blue for easy reference. Mouse hover the text to consult previous value)

Annex C - Receiving Office

Transmittal fee:

None

Annex D - International Searching Authority

Search fee (PCT Rule 16):

This fee is payable to the receiving Office in the currency or one of the currencies accepted by it.

2,200 AUD

1,287 CHF

1,336 EUR

2,037,000 KRW

2,357 NZD

1,930 SGD

1,407 USD

26,920 ZAR

Summary of requirements for entry into the national phase

Filing fee:

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

For details, refer to: https://www.ipaustralia.gov.au/patents/timeframes-and-fees#fx-tabs-0-panel-0

— Where the following preferred means for specific transactions are used: Online Services (eServices) or Business to Business (B2B).

400 AUD

— Where other means such as mail or at a counter are used for specific transactions.

600 AUD

The procedure in the national Phase

AU.09A EXCESS CLAIMS FEE AT FIRST EXAMINATION REPORT

An excess claims fee is payable if the application has more than 20 claims at the first examination report date. The claims for reckoning the fee are not fixed at entry into the national phase but are affected by claims added or removed by amendment of the application up to the first examination report date. If the fee is not paid within one month of the first examination report date, the application lapses. It can be restored at any time before the time limit to have the application accepted, by paying the amount of the excess claims fee, without needing to seek an extension of time. The amount of the fee and how it is reckoned is indicated in Annex AU.I.

AU.10 ACCEPTANCE FEE INCLUDING ADJUSTING AMOUNT FOR EXCESS CLAIMS

A fee is required to be paid upon acceptance of the application. It can include an adjusting amount for claims added between the first examination report date and acceptance of the application. This is if the maximum number of claims at any time in that period exceeds 20 claims. If the acceptance fee is not paid within three months of the publication of the notice of acceptance, the application lapses. Restoring the application requires the applicant to obtain an extension of time to pay the acceptance fee. The amount of the fee and how it is reckoned is indicated in Annex AU.I.

AU.16 EXTENSION OF TIME LIMITS

If, due to an error or omission on the part of the applicant, his agent or attorney, or due to circumstances beyond the control of the person concerned, the applicant has failed to observe a time limit which is prejudicial to his rights, or the Commissioner is satisfied that the person took due care as required by the circumstances, to ensure the doing of the act within that time, he may request the Office to extend the time limit even though that time has already expired. The request must be presented in writing, and establish the facts on which the request is based in a declaration and also must be accompanied by a fee (for the amount of the fee, refer to Annex AU.I).

Annexes

Annex AU.I - Fees

The first amount is applicable where the following preferred means for specific transactions are used: Online Services (https://portal.ipaustralia.gov.au/login) or Business to Business (B2B).

The amount in parentheses is applicable where other means such as mail or at a counter are used for specific transactions.

For details, refer to https://www.ipaustralia.gov.au/patents/timeframes-and-fees#fx-tabs-0-panel-0.

Filing fee:

400 AUD

(600 AUD)

— national phase entry of a PCT application under section 29A of the Australian Patents Act

400 AUD

(600 AUD)

For examination under section 45 of the Australian Patents Act (normal examination):

350 AUD

(b) all other applications

550 AUD

Excess claims at first report:

Fee payable if there are more than 20 claims in the application at its first examination report date:

(a) amount for each of the 21^st to the 30^th claims

125 AUD

(b) amount for each claim in excess of 30

250 AUD

Minimum payable in all cases

300 AUD

Adjusting amount for claims added between first report and acceptance – if the maximum number of claims at any time in that period exceeds 20 claims

(a) amount for each of the 21^st to the 30^th claims added

125 AUD

(b) amount for each claim added in excess of 30 claims

250 AUD

— on the 6^th anniversary

345 AUD

(395 AUD)

— on the 7^th anniversary

380 AUD

(430 AUD)

— on the 8^th anniversary

420 AUD

(470 AUD)

— on the 9^th anniversary

465 AUD

(515 AUD)

— on the 10^th anniversary

540 AUD

(590 AUD)

— on the 11^th anniversary

645 AUD

(695 AUD)

— on the 12^th anniversary

780 AUD

(830 AUD)

— on the 13^th anniversary

945 AUD

(995 AUD)

— on the 14^th anniversary

1,140 AUD

(1,190 AUD)

— on the 15^th anniversary

1,385 AUD

(1,435 AUD)

— on the 16^th anniversary

1,675 AUD

(1,725 AUD)

— on the 17^th anniversary

2,010 AUD

(2,060 AUD)

— on the 18^th anniversary

2,390 AUD

(2,440 AUD)

— on the 19^th anniversary

2,815 AUD

(2,865 AUD)

Processing

WIPO - PCT Applicant's Guide AU - Australia
Australian Patent Office

Useful information

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Annex C - Receiving Office

Annex D - International Searching Authority

Annex E - International Preliminary Examining Authority

Annex L - Deposits of Microorganisms and Other Biological Material

National Phase

Summary of requirements for entry into the national phase

The procedure in the national Phase

Annexes

Processing

WIPO - PCT Applicant's Guide AU - Australia Australian Patent Office

Error Information Warning Confirmation

WIPO - PCT Applicant's Guide AU - Australia
Australian Patent Office