IP Application Processes

Patent Application for standard patents

1. Application

The application filing phase of a patent application is one of the most critical phases.

  • Patentee files a standard patent application in Australia (this can be direct or through the PCT National phasse entry system)
  • The standard application will be given a priority date corresponding to its earliest possible priority
  • During this phase the Patent is not published and it is not open to public inspection

     

2. Publication

Next, the application will be made Open to Public Inspection (OPI):

  • this must be done within 18months of the priority date of the Patent
  • the OPI date defines the date from which a person can infringe the Patent (remember a Patent must be granted before it can be enforced)
  • from the OPI date forward, the Patent is public

     

3. Examination

Next, the application will be examined by IP Australia:

  • IP Australia will write to the Patentee and request that they request examination
  • this is the start of a conversation with IP Australia
  • if IP Australia objects to the grant of the patent, the patent may need to be amended

     

4. Patent Opposition

Once the application is accepted by IP Australia, it will be advertised for opposition purposes.

  • Any trader can oppose acceptance of the Patent during the opposition period
  • We can assist in the Patent opposition proceeding including appearing at hearings
  • Once a decision is handed down we can assist in appealing the decision to the Federal Court or defending an appeal
  • if you want to oppose the grant of a Patent – you must move quickly

     

Trademark Application

1. Application

The application filing phase of a trade mark application is one of the most critical phases. This is a short list of just some of the steps that must be done correctly to obtain a valid and enforceable trademark.

  • For the purposes of trade mark registration, goods and services are classified into 45 classes. It is important that you file the trade mark in the correct class.
  • You must file the trademark in the correct name or it may be invalid.
  • You need to file for the correct goods and services. If you do not do so, you might not be able to enforce your trade mark rights.

     

2. Examination

Next, the application will be examined by IP Australia: this is the start of a conversation with IP Australia

  • if an examination report is issued by IP Australia, we can respond to the examination report explaining why the trade mark should be accepted for registration. This is why it is vital to know the trademark cases that have been handed down by the Courts.
  • We can respond to the examination reports by arguing a point, by providing evidence of use, consent to use letters and other legal techniques.
  • We can appear any any hearing on the matter and appeal decisions to the Federal Court.

     

3. Trademark Opposition

Once the application is accepted by IP Australia, it will be advertised for opposition purposes. Any trader can oppose acceptance of the mark during the opposition period

  • We can assist in defending a trade mark opposition proceeding including appearing at hearings
  • We are experienced in filing Notices of Intention to Oppose, Statements of Grounds and Particulars, evidence in opposition proceedings and arguing cases
  • Once a decision is handed down we can assist in appealing the decision to the Federal Court or defending an appeal
  • if you want to oppose a trade mark – you must move quickly