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Exporting IP… trader beware


The US-Australia Free Trade agreement has got everyone talking. Like it or loathe it, smart companies are reading the fine print. They are doing their homework, exploring new ways to profit and adjusting their plans to suit. In the area of Intellectual Property (IP), systems are similar, but the rules do vary. Differing interpretations of novelty, ownership and duration of protection are just a few of the potential traps facing the unwary trader. By Malcolm Royal.


Unlike in Australia, where the rule of thumb is always ‘first to file’, in the US, while this is generally true, it is also possible for another party, who files later, to be granted the patent instead. To do this, they need to demonstrate that, among other factors, while they were not the first to file, they were the first to conceive the invention.


The naming of inventors must be carefully evaluated. Incorrect identification of inventors can lead to invalidation of an otherwise enforceable US patent. Authorship of a research paper or leadership of a department does not, of itself, qualify a person to be listed as an inventor on a patent application.


Australia has an absolute novelty standard. This means that publication of documents or use of the invention anywhere in the world before the filing date invalidates the patent. The US has a relative novelty standard. As in Australia, publication of documents anywhere in the world will invalidate a patent under the US system. But prior use will only invalidate the patent if it takes place in the US.


In the US, filing automatically leads to an examination by the US Patent Office. In Australia, applicants are required to file a Request for Examination. This can be lodged at filing of the application. However, many applicants choose to wait until they are asked to lodge it by the Patent Office. Once asked, the applicant must file the Request within 6 months.


In Australia, only search results conducted by foreign patent offices need to be disclosed. In the US there is a requirement to file all prior art of which the applicant is aware that might be considered material to the patentability of the invention. This is a far more stringent requirement. Failure to do this can lead to invalidation of the US patent.


It is often quite appropriate to request an interview (face-to-face or by telephone) with the US Examiner following an examination report. Such interviews are often successful in leading to understanding of the Examiner’s concerns and highlighting what will be necessary to achieve allowance of the application. There is no such avenue available in Australia.


It is possible for third parties to oppose the registration of an Australian patent. Any such opposition must be filed within 3 months from advertisement of acceptance of the Australian application. In the US, any person, at any time after issue of a US patent, can file a request for re-examination. Such a request can be filed by the patentee seeking to have the patent claims evaluated in light of newly found prior art or by a third party, such as a person that may feel threatened by the claim scope.


  • First to file
  • Names of inventors must be provided and the entitlement of the applicant from those inventors specified
  • Absolute novelty
  • Must request examination
  • Search results of other national Patent Offices must be disclosed
  • 21 month term from first examination report to place application in order for acceptance
  • Pre-grant opposition
  • Renewal fees due annually from 5 years for filing until end of term

United States of America

  • First to invent
  • Inventors must be recorded as applicants. An assignment from the inventors can be recorded
  • Relative novelty
  • All applications are examined
  • All prior art in the possession of the applicant and considered material to patentability must be disclosed
  • 6-month term for filing a response to a first Official Action. If a second Official Action issues and is made “final”, the applicant’s options for reply are limited
  • No pre-grant opposition but re-examination is available
  • Renewal fees due 31/2, 71/2 and 111/2 years after grant of the patent

Malcolm Royal is President, Institute of Patent and Trade Mark Attorneys of Australia Further details about the Institute of Patent and Trade Mark Attorneys can be found on their web site at www.ipta.com.au