As a result of amendments to the Australian Patents Regulations that came into force on 1 January 2009, there is no longer a requirement to lodge certified copies of priority applications in respect of Australian patent applications, unless the Australian Patent Office specifically requests such a certified copy. We expect that the Australian Patent Office will only make such a request if intervening prior art is identified that requires assessment of the priority date of specific claims. If the Australian Patent Office requests a certified copy, it must be filed within three months of the request.
This change in practice is in line with the current practice for Australian design applications which already does not require the filing of certified copies of priority applications unless requested by the Australian Designs Office.
There is also no longer a requirement to file a certified copy of the granted foreign patent on which any request for modified examination of an Australian patent application is based, unless specifically requested by the Australian Patent Office.
The specification of any Australian application that is the subject of modified examination must, however, still be identical to that of the granted foreign patent, apart from matters of form. If the Australian Patent Office does request a certified copy of the granted foreign patent it must be filed prior to acceptance (i.e., allowance) of the Australian application.