Best Practices for Voluntary Claim Amendments in Australia
If you’re a patent practitioner somewhere far away from kangaroos and koalas, and suddenly there’s a client who wants to file a patent application in Australia, you will no doubt be wondering what the things are that you should know.
Or possibly the things you already know, but might have forgotten.
Here’s the cheat sheet about filing:
In Australia you can either:
enter the national phase from a PCT application, or
file a convention application within 12 months of filing a priority application.
Australia is a 31-month PCT country.
If your application is not in English, you do need to file an English translation before the filing deadline. No certificate to verify the translation is required in Australia, although it is required in New Zealand.
The official fee is fairly low, currently in 2024 only $370 with no “small/large entity” difference.
Australian and New Zealand patent attorneys are registered as “Trans-Tasman” attorneys, which means that you can rely on an Australian and/or a New Zealand attorney to file Australian and/or New Zealand applications.
What you need to know about voluntary claim amendments:
You can have 20 claims without excess claim fees.
Excess claim fees are fairly modest, with an official fee of AU$125 for each claim between 21 and 30 and AU$250 after that.
You can have multiple independent claims (though there is a requirement for unity).
You can have multiple dependencies.
The good news:
You don’t really need to amend anything at filing because:
You don’t need to request examination at filing, you can do that later.
You can fix up your claims during examination.
You can even file a request to postpone acceptance, and then amend your claims after examination.
No excess claim fees are due until acceptance.
Easy peasy. Or as we like to say down under:
No Worries!
Please reach out to any of our practitioners if you have any questions.