Contact

Biophile Pty Ltd

​​Tel: +61 414 577 184

L3, 110 William St

Perth, 6000, WA

Australia

© 2019 by Biophile Pty Ltd ACN 617079259. Our liability is limited to the amount covered by our professional indemnity insurance.

Our IP group deals mainly with incoming patent cases from foreign clients and their intellectual property counsel. Should you be an Australian company interested in obtaining protection for your invention, please contact us.

FOREIGN AGENTS: FILE PATENTS IN AUSTRALIA & NZ

A streamlined practice

We have streamlined our patent practice to make it as quick and easy as possible to interact with us and obtain protection for your life sciences patents in Australia and New Zealand.  Carel Smit pioneered the "golden rule" of reciprocal filing: we charge your clients the same amount for filing in Australia that you would charge our clients for filing in your country. 

World-class systems

We use class-leading electronic IP management systems that automatically capture email correspondence and generate automatic reminders for our clients. We use no paper and our travels to see clients are offset by donations to tree-planting organisations. 

Unique pricing systems

For certain direct-filer clients, Biophile has pioneered a unique subscription-based invoicing system (optional) for our clients, that ensures easy and accurate budgeting year-on-year, no matter where in the patent examination lifecycle they are. We can charge you a set fee every year based on our data-driven systems of the average cost of prosecution and the average time it takes us to obtain protection for our clients in Australia and New Zealand. Say hello below and allow us to guide your patents through examination. 

How to file in Australia and New Zealand

When it comes to filing patent applications, Australia and New Zealand are both remarkably free of formalities. 

AUSTRALIA

NATIONAL PHASE applicationS

The deadline for filing a national phase application in Australia from an international PCT application is 31 months from the priority date of the earliest basic application.

We require:

  • The PCT application details. It is preferred that you also provide us with a full copy of the published PCT specification, however we are able to obtain this ourselves once we have the PCT application details.

  • A verified English translation of the patent specification if the specification is not in English. This should include a translation of any amendments made during the International Phase (if any).

After filing, we require:

  • Details on how the Applicant derives entitlement from the inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the basic application. This will allow us to complete a Notice of Entitlement document, which must be filed when we request examination.

Where relevant, please also supply the details of any changes to the Applicant or Inventor details recorded before WIPO.

Convention PATENT applicationS (DIRECT FILING)

An Australian complete application can be filed with a priority Convention claim within a 12-month period.

We require:

  • An English language patent specification, including drawings (if any);

  • The full name and address of each of the Applicants;

  • The full name of each of the Inventors;

  • Full details of the priority application, including: country, application number, filing date and Applicant details.

After filing, we require:

  • Details on how the Applicant derived entitlement from the inventors and how the Applicant derives entitlement to claim priority from the priority application. This will allow us to complete the Notice of Entitlement document for filing when we request examination. We can send you suggested phrasing.

Request for examination

An Australian patent application will not be examined automatically - a request for examination must be filed at extra cost.  This can be done at filing (suggested), but the Commissioner of IP Australia can also issue a directive, following which a request for examination must be filed within 2 months. At the latest, a request can be filed within 5 years from the filing date.

Innovation patent applications

The Australia government has now tabled and accepted legislation cancelling innovation patents. However, it has not become law yet. Innovation patents are an alternative to filing a standard application. An Innovation patent provides rapid protection that may be useful if you are looking for a granted patent early or have a product with a short market life.

An Innovation patent only has a term for eight years. The patent may only include five claims.

We require:

  • An English language specification including drawings (if any)

  • The full name and address of each of the Applicants;

  • The full name of each of the Inventors;

  • Full details of the priority application (if priority is to be claimed) including country, application number, filing date and Applicant details.

After examination for formalities, an Innovation patent will rapidly proceed to grant. This usually takes about 30 days from the filing date. Note, however, that the granted innovation patent is not enforceable unless you request that the patent be examined. Following successful examination, it is certified. It is also possible to have your innovation patent examined at any time after grant.

As with both a PCT National Phase and a Convention application, a Notice of Entitlement document must be filed.  It is required to be filed to complete formality requirements.  Therefore we do need details on how the Applicant derives entitlement from the Inventors, and how it derives entitlement to claim priority, if relevant, at the time that we file the application or shortly thereafter.

NO REQUIREMENT FOR Certified copIES of priority applicationS

A certified copy of the priority application and verified translation thereof (if not in English) is not required at the time of filing when filing either a PCT National Phase, a Convention application, or an Innovation patent application. IP Australia may, however, request this at any time during examination.

Powers of Attorney

No forms (Powers of Attorney, declaration, assignment or similar) signed by the Applicant or Inventors are required to be filed with IP Australia.

 

New Zealand

PCT National Phase applicationS

The deadline for filing a National Phase application in New Zealand from an International PCT application is 31 months from the priority date of the earliest basic application.

We require:

  • PCT application details, preferably a full copy of the published PCT specification.

After filing, we require:

  • a verified English translation of the patent specification and any amendments made during the International Phase where the specification is not in English. This must be filed within three months of the National Phase entry date.

  • details on how the Applicant derives entitlement from the Inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the basic application (same Applicant, assignment or other arrangement/ agreement). Entitlement details must be filed before the application is accepted.

Where relevant, we also require the details of any changes to the Applicant or Inventor details recorded before WIPO. A certified copy of the basic application and verified translation thereof (if not in English) is not required at the time of filing. However, this may be required by the Intellectual Property Office of New Zealand (IPONZ) on request.

Convention PATENT applicationS

A New Zealand complete application can be filed with a Convention claim within the relevant 12 month convention priority period.

In order to proceed, we require:

  • an English language patent specification including drawings (if any)

  • full contact details and nationality of the Applicant

  • full name, address and nationality of each of the inventors

  • full details of the priority application, including country, application number, filing date, Applicant details and title.

After filing, we require:

  • details on how the Applicant derives entitlement from the Inventors (by assignment, employment or other arrangement/agreement) and how the Applicant derives entitlement to claim priority from the priority application (same Applicant, assignment or other arrangement/ agreement). Entitlement details must be filed before the application is accepted.

A certified copy of the priority application and verified translation thereof (if not in English) is not required at the time of filing. This may be required by the IPONZ on request.

Request for examination

A filed NZ patent application is not automatically examined. Examination can be voluntarily requested at any time, including at filing, but must be requested the earliest of five years from the earliest complete filing date or within two months from Direction period for requesting examination issuing from IPONZ. Failure to file an examination request within two months of a Direction results in the application being treated as abandoned.

For divisional applications, the five year period commences on the filing date of the first filed relative (parent, grandparent, etc). This effectively limits filing of divisional applications to five years from the filing date of the first filed relative, because there is no provision for extending that five year period.

Powers of Attorney

No forms (Powers of Attorney, declaration, assignment or similar) signed by the Applicant are required to be filed with IPONZ at the time of filing. However, an authorisation of agent form executed by the Applicant is required for any changes to the Applicant details, including address changes.

PROSECUTION IN AUSTRALIA AND NEW ZEALAND

Please note that we will rely heavily on your to provide us with copies of English language amendments (both clean and re-line copies), as well as arguments used in foreign prosecution, to enable a fast an accurate turn-around on your prosecution