Ensuring Electronic Signature Lawfulness for Assignment of Intellectual Property in Australia

How to eSign a document: electronic signature lawfulness for Assignment of intellectual property in Australia

[Music] hi i'm anthony from alder ip and welcome to another episode in the ip series today we're going to be talking about patent rights and how patent rights are different in australia to most other countries and some of the nuances in the australian system which are not in overseas patents it's particularly relevant if you're looking to file a patent in australia from overseas i think the biggest difference in the australian system is the fact that when we go into an examination process for the patents in australia the deadline for examination goes from 12 months from the time you get the first examination report once you get that examination report you have 12 months to overcome all of the objections raised by the examiner if the examiner raises another examination report that timeline still keeps ticking so you've reduced the whole time period you don't it doesn't reset which is quite unusual and quite different to most other jurisdictions because if you compare this to the us of course you get an official action which is their exam report and then you have three months roughly to to respond to that and if you respond you get another exam report and you get another three months and you keep getting these extensions of time every time that they give you another exam report or another official action but in australia that doesn't happen so in australia once you get that first official action the clock starts ticking and it does not stop so you really need to get in a response as soon as possible it's really in your to your advantage to actually file a response as soon as possible and that way if the examiner does come back or when they do come back we have another opportunity to at least argue with them a little bit more because we can go back to them as many times as we can in 12 months so if you are fast and efficient with the process you actually get more bites of the cherry or more more going back to the examiner and arguing your case you don't necessarily have to be tied to one or two exam responses which is generally what happens in europe or the usa the other thing in australia is that we used to have the innovation pattern system and the innovation pattern system has now been turned off effectively so we can't file new applications under the innovation patent system however what we can do is if you do have a currently pending application at the moment with a priority date before the turn off date of the innovation pattern system we can actually convert it to an innovation pattern and this is particularly useful when the examiner's been difficult about inventive step or about obviousness if we've got an objection on that basis that we're finding difficult to overcome or too expensive to overcome we can actually just convert it to an innovation pattern and that will take it off the examination team entirely and it will just get a grant and it speeds the whole process up so these are two big differences with the australian system compared to um the world worldwide system and it's it's it's important that you understand that before you get going also with the australian system examination processes are a little bit faster than the rest of the world in most cases we're usually talking about two to three years before we get when we get an examination report and it's usually about the three to four year mark when we get it actually granted through the australian patent office which is slightly quicker to countries like usa and europe we're pretty much on par with the examination time frames in china for example i hope that's helpful and i hope you've learned a little bit about the pattern systems in australia and how they're different to the rest of the world if you need any more information please feel free to contact us at order ip thanks [Music] you