Australia

Spruson

Overview

Capital: Canberra, ACT

Population: 23,130,900 (est. 2013)

Languages: English

Area: 7,692,024 km2

Currency: Australian Dollar (AUD)

Legal System: English Common Law

Spruson & Ferguson is one of the largest intellectual property (IP) firms in Australia and is also one of the oldest, established in 1887. Our patent and trade mark attorneys are qualified to act directly before IP Australia and we were the first Australian firm to file electronically before the Australian Patent Office.

Our professional team includes patent attorneys, trade mark attorneys, PhD graduates, professionals with Masters Degrees, qualified solicitors, Singapore, US, South African and Japanese patent attorneys, and are members of more than 30 different Australian and international professional associations.

Our team members are some of the most highly regarded IP professionals in the country specialising in a range of practice areas including chemical/life sciences, mechanical, electrical/information & communications technologies, plant breeder’s rights, trade marks, commercialisation, and litigation.

Their diverse professional backgrounds and real industry experience in science, defence, finance, legal and commercial operations enables them to provide much more than advice on the legal aspects of intellectual property. Our professionals apply their skills and experience across all elements of IP including its protection, management, use, procurement, commercial assessment and exploitation, and enforcement.

Our associated legal practice, Spruson & Ferguson Lawyers, was the first law firm in Australia to specialise exclusively in IP and its depth of experience in IP litigation and commercialisation is unparalleled in Australia. Spruson & Ferguson Lawyers provides the full range of IP legal services, from commercial transactions and advice to patent and trade mark dipsute resolution and litigation.

From our offices in Sydney and Melbourne, we work closely with our teams in Singapore, Malaysia, Indonesia, Thailand, Hong Kong and China to deliver high quality and seamlessly integrated IP services throughout Asia-Pacific.

Patent Practice Summary

Filing Statistics

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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 – available except for pharmaceuticals 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

 

Filing Requirements

 

Affiliations

Bodies

 

Member

  • Patent Law Treaty
  • Singapore Treaty on the Law of Trademarks
  • WIPO Copyright Treaty
  • WIPO Performances and Phonograms Treaty
  • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
  • Trademark Law Treaty
  • Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations
  • Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite
  • Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure
  • Patent Cooperation Treaty
  • Strasbourg Agreement Concerning the International Patent Classification
  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
  • Berne Convention for the Protection of Literary and Artistic Works
  • Paris Convention for the Protection of Industrial Property

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