5.3.1.1 Formalities required and assessed at filing

Also in this Chapter:

• 5.3.1.2 Credible Address for Service

• 5.3.1.3 Formalities Required and Assessed During Examination

Key Legislation: 

Patents Regulations: 

• reg 3.2C Specifications--formalities check for PCT application
• reg 3.5AE PCT applications--prescribed period
• Schedule 7 Fees

Patent Cooperation Treaty (PCT):

• Article 21 International Publication ​​​​​​​
• Article 22 Copy, Translation, and Fee, to Designated Offices 
• Article 39 Copy, Translation, and Fee, to Elected Offices 

Related Chapters:

• ​​​​​​​5.3.2 Formal requirements of the specification

On this page

• General formalities
• National phase preliminaries
  • Allocating AU application number
  • National phase entry requirements
  • Copy of the International Application Furnished by Applicant
  • Classification

General formalities

An application for a standard patent must provide the following information:

• an address for service in Australia or New Zealand (see 5.3.1.2 Credible address for service);
• the inventor's name(s); and
• a certificate of verification for a translation of a non-English application, in certain instances.

The specification must also comply with certain formality requirements (see 5.3.2 Formal requirements of the specification).

If these requirements are not met, the application may lapse.

National phase preliminaries

The national phase is the final stage of processing an international application originally filed in the receiving Office of one of the contracting states of the PCT.

Allocating AU application number

A case file is created for every PCT application having an AU designation.  The record includes an allocated Australian patent application number, title and details of one applicant. The application number has ten numerals, wherein the first four numbers represent the current calendar year, the fifth number designates the type of patent (1 designating an innovation patent, and '2 up to 7' designating a standard application) and the remaining five numbers are taken from a five digit series.

National phase entry requirements

Article 22 and Article 39 allow applicants a period of 30 months from the priority date for their PCT applications to enter the national phase. Contracting states may, however, allow a longer period and in the case of Australia the period is 31 months (reg 3.5AE).

To enter the national phase in Australia:

• The national phase entry fee specified at item 214A of schedule 7 of the Regulations must have been paid. It should be noted that there is no requirement for an examination fee to be paid at this stage.
• If the PCT application has not been published under Article 21 of the PCT, a copy of the application must be filed (see Copy of the International Application Furnished by Applicant below).
• If the PCT application was not filed with a Receiving Office in English, a translation of the application must be filed (unless a translation was filed in the international phase and published under Article 21).

Once in the national phase, the application must also meet the requirements of a formalities check.  If the requirements are not met and any deficiencies not addressed, the application will lapse.

Copy of the International Application Furnished by Applicant

The situation where an applicant is required to furnish a copy of the international application to enter the national phase usually arises where the applicant requests early national phase entry of an application, e.g. less than 18 months from the priority date.

Where the applicant furnishes a copy of the international application, this copy remains a proxy specification for the actual PCT application (pamphlet) that will eventually be published by WIPO.  Before commencing examination on a case with a proxy specification, examiners should check Patentscope to see whether a copy of the pamphlet is available.  If the pamphlet is not available, examination should be carried out on the proxy specification. If the pamphlet is available, examiners should download a copy and import it into the case file.  The downloaded version then becomes the official specification which is used for examination purposes and the proxy specification is disregarded.

Note:  When importing the pamphlet into RIO, it should be separated into its component parts, i.e. Abstract, Description, Claims, Drawings and Gene Sequence. The front page of the PCT pamphlet forms the Abstract.  The 'Document Status' for all documents should be 'Filed').

Note:  An Assembly Note should also be added to the case file to alert CEG that the pamphlet is the official version of the specification).

Classification

All published PCT applications will have been classified or indexed by an ISA. The allocated IPC marks will appear on the 'Classifications' tab on the case file. These applications are not subjected to re-classification when entering the national phase, or when lapsing due to failure to enter the national phase. Where there is a missing or no recognised valid IPC mark(s) provided, CEG will generate an indexing task to be completed by the relevant examination section.

Where the allocated IPC mark(s) are clearly incorrect, examiners must re-classify the application using the "Maintain classification" task following the procedures outlined in Maintaining Classifications.