On 1 December 2012, IP Australia will introduce e-filing of all patent and design applications.

Electronic filing applies to:-

  • standard, divisional, innovation and provisional patent applications and applications for design registration filed after 1 December 2012,
  • patent applications claiming priority where the 12 month convention period expires on or after 1 December 2012,
  • applications for design registration where the 6 month convention period expires on or after 1 December 2012, and
  • national phase entry of PCT applications designating Australia where the 31 month national phase entry date is on or after 1 December 2012.

The main features of e-filing are:

  • all details of a patent and design application must be filed at the time of filing including:
    • entitlement details from the inventor to the applicant
    • inventor details on all patent applications including provisional applications where providing inventor details at the time of filing is currently optional; and
    • convention priority details including Applicant's entitlements to claim priority
  • applications which are not filed electronically after 1 December 2012 will be subject to an additional $100 official fee.

Therefore, there is a financial incentive for applicants to electronically file all patent and design applications from 1 December 2012. However, as mentioned above, unless all of the inventor and entitlement details are provided at the time of filing or national phase entry, it is not possible to electronically file patent and design applications or electronically enter the national phase.

Therefore all new instructions to file patent and design applications and enter the national phase after 1 December 2012 which do not include these details will be subject to the additional $100 official fee.

If we receive instructions which do not include entitlement details before 29 November 2012, we will ensure that these applications are filed on 30 November 2012 to avoid the extra official fees.