Australia

AustraliaCapital: Canberra
Capital Timezone: GMT + 10
Population: 23,500,361 (est. 2014)
Languages: English
Currency: Australian Dollar (AUD)
Legal System: English common law

Key Issues

• All litigation and prosecution in English
• Ranked 21st for having the best IP protection in the World Economic Forum’s Global Competitiveness Report 2013/2014

Enforcement

• Enforceable jurisdiction
• Potential for alternative dispute resolution in IP matters via arbitration, mediation, settlement
• Infringement remedies – damages, account of profits and injunctions
• Innocent infringer defence
• Potential relief against groundless threats

Prosecution

• National phase entry deadline for PCT applications in Australia: 31 months
• Patentable subject matter – all subject matter patentable except human beings and biological processes for their generation
• An amended Patents Act came into force in Australia on 15 April 2013, affecting all standard applications for which examination was requested on or after this date:
– Higher threshold for inventive step
– New description and support requirements
– Acceptance deadline 12 months (non-extendable) from date of first examination report
• Generous extension of time provisions where a deadline cannot be met due to an error or omission beyond the Applicant’s control, including national phase entry
• Amendments allowed at any time, including after acceptance (provided that no new matter is claimed)
• Voluntary Divisional applications possible
• Excess claim fees apply for claims in excess of 20

Other Issues

• Pre-and post-grant opposition available
• Experimental use exceptions
• Patent Term Extensions – possible
• Pathways for the approval of biosimilars – available
• Parallel importation – complex issue, but may be possible under certain conditions
• Foreign filing license not required
• Pharmaceutical Data Exclusivity Laws – data exclusivity (5 years)
• PPH with Canada, Denmark, Hungary, Iceland, Israel, Finland, Japan, Korea, Norway, Portugal, Spain, Sweden, UK and USA

For more information, contact us on mail@fak.com.au or +61 7 3011 2200.