Overseas Applicants

Are you located outside of Australia? Our registered attorneys can assist overseas applicants and overseas attorneys with filing their applications via the patent and trade mark office, IP Australia.

We can assist you or your clients with:

Patent drafting
Patent prosecution
Registered design prosecution
Trade mark prosecution

Our multidisciplinary team specialises in complex patent matters. We have a proven track record in comprehensive expertise in all major technology areas:

Mechanical engineering
Electrical engineering
Electronics, IT and telecommunications
Software; computer-implemented inventions
Biotechnology
Chemistry
Materials; polymer science
Physics
Trade Marks
Registered Designs

OPPOSITIONS AND CONTESTED PROCEEDINGS

When disputes arise, our Australian attorneys provide outstanding advice and outcomes in contentious areas.

If you are located overseas, we work closely with foreign attorneys to navigate the vast domain of Australian IP law and also to enforce and defend clients’ IP rights around the world.

If you would like to commence a patent or trade mark opposition or need assistance overcoming an opposition in Australia, New Zealand or internationally, please contact us.

The Trans-Tasman IP Attorneys Board administers the regulatory and disciplinary regimes for patent attorneys in Australia and New Zealand, and trade marks attorneys in Australia.

PATENTS: AU NATIONAL PHASE ENTRY

If you’re an overseas attorney, an individual, or a member of a company or other organisation that has an international patent application under the Patent Cooperation Treaty (PCT) then the following information is for you.

We are also registered in New Zealand and have an address for service there in case you wish to enter the New Zealand national phase as well.

PCT NATIONAL PHASE ENTRY DEADLINE MINIMUM REQUIRED INFORMATION

The deadline for national phase entry into Australia is 31 months from the earliest priority claim, whether or not International Preliminary Examination has been requested (Chapter II Application).
There is no requirement for a Power of Attorney or an Inventor’s Declaration.

At a bare minimum we require information identifying the application, i.e., the PCT number or the WIPO publication, and preferably a copy of the front page of the WIPO pamphlet.

In Australia the National Phase Entry fee is a flat fee irrespective of the number of claims in the international application, whether or not there are multiple claim dependencies or the length of the patent specification.

If the PCT application is in a language other than English (a non-English application) then an English language translation of the international patent specification should also be lodged with IP Australia before the 31 month deadline. The English language translation should include any amendments that were made during the international phase under Article 16 of the PCT or Article 34 of the PCT.

There is no longer any requirement for a certificate of verification of the translation. However, it is important that the translation is a true and complete translation of the PCT application as originally filed, including any amendments made under Article 34 and/or Article 19. If any further amendment is required, then such an amendment must be made separately and should not be included in the translation of the PCT application that is lodged.

After IP Australia has been provided with the Australian address for service, national phase entry fee payment and the translation if the PCT application was not in English, it will issue a filing receipt.

NOVELTY REQUIREMENTS

Australia is a first-to-file, absolute novelty country so that publication of the invention or public use anywhere in the world before the priority date is invalidating.

Why MBIP

At Westbridge Legal our team has come together to form a firm that understands the value of relationships and the importance of being responsive and agile when it comes to our clients. We have learnt a lot from our past experiences working at large multinational firms as well as IP Australia. Our track record of success makes us one of the leading boutique patent attorney firms in Australia.

Our attorneys have helped protect the innovations and brand assets of clients in Australia and overseas. Our multidisciplinary team specialises in complex patent matters.

At MBIP, we are big enough to deliver optimal outcomes but small enough to adapt and respond flexibly to client requests without compromising quality.

Unlike many Australian IP firms that are publicly listed, we are privately owned. We are not under pressure to generate profits for external shareholders. When you deal with us, you are dealing with a truly independent firm that is not driven by its share price on the stock exchange. As a result, our clients, both local and overseas, enjoy a personalised, responsive and efficient service.

Protecting your IP in Australia

Our attorneys have prepared and prosecuted hundreds of trade mark, patent and design applications for clients in Australia and overseas. We provide a premium service, but not at a premium price. Our experienced Attorneys have worked at some of Australia’s largest intellectual property firms and a number of them have diverse experience working at in-house roles for multinational corporations. Qualifications and expertise in a diverse range of technology areas ensure that we deliver the best commercial outcomes for our clients.

Our experience in handling multijurisdictional patent and trade mark portfolios has helped us build a network of trusted associates who can provide us with efficient IP services throughout the world.

We are always seeking to expand our network and work with reliable professionals in order to offer our clients optimal outcomes in every jurisdiction.

MBIP attorneys regularly attend annual international IP conferences. If you would like to stay up to date with where our attorneys are travelling to next, please email us directly at mail@mbip.com.au or subscribe to our quarterly email. We would be happy to meet with you.