5.6.2.9 Convention applications

Date Published 09 Oct 2023

Also in this Chapter:

Key Legislation:

Patents Act:

s29B Applications for patents--special rules for Convention applications
s43 Priority dates
s43AA Disclosure in basic applications
s222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
s223 Extensions of time

Patents Regulation:

reg 1.3 Interpretation
reg 1.4 Meaning of Convention country
reg 3.11 Prescribed period--making Convention application
reg 3.13B Priority date for Convention application
reg 3.14D Prescribed documents: basic application

Paris Convention:

Article 4 Patents, Utility Models, Industrial Designs, Marks, Inventors’ Certificates: Right of Priority. - G. Patents: Division of the Application

Related Chapters:

Overview

Section 29B provides for the making of Convention applications. These provisions derive from Australia being a signatory to the Paris Convention for the Protection of Industrial Property (usually referred to as the Paris Union or Paris Convention).

The effect of the Convention is to recognise and maintain an applicant's right to an application made in a Convention country if other applications for the same invention are made in other countries within 12 months.

In general, the examination of Convention applications is similar to Standard National cases, except for some specific requirements which will be covered in this chapter.

General Requirements of Convention Applications

A Convention application may be made for a standard patent or an innovation patent. To obtain the benefits of the Convention, an application must comply with the requirements of the Act.

Matters particularly relevant to Convention applications include:

the basic application must have been made in a Convention country;
the patent request must identify the basic application by number, date, and country of origin;
the application must be made within the prescribed time; and
the specification accompanying the application must be a complete specification.

Who May Apply

A Convention applicant in Australia must be a person as specified in Schedule 1 of the Act. This is similar to the definition of an ‘eligible person’ (see 5.4.1 Who can file and who can be granted a patent).

A Convention applicant, in relation to a basic application, means a person (or a body of persons, whether incorporated or not) who:

has made the basic application;
is the assignee of that applicant;
would, on the grant of a patent on that application, be entitled to have the patent assigned to the person;
is the legal representative of a person mentioned in any of the above; or
has the consent of a person mentioned above to make a Convention application based on that basic application.

The Act allows a single Convention application made in Australia to be based on 2 or more basic applications. These basic applications may have been made in different Convention countries and by different applicants. Where a Convention applicant is not the same as a basic applicant, examiners should check that the Convention applicant is a person as defined in Schedule 1.

Convention Country Listing

Under reg 1.4, countries which are signatories to the Paris Convention, or countries that are full members of the World Trade Organization, are "Convention countries".

A list of countries that are signatories to the Paris Convention is available from WIPO, and a list of countries that are full members of the World Trade Organization is available from the WTO.

Convention Country Status Change

A Convention application can only be made if, at the time of filing an application in Australia, the foreign country was a Convention country as defined in reg 1.4 (see lists above). Thus, if the country of the earlier application (as stated on the patent request) was not a Convention country at the time of making the application in Australia, an objection should be taken that the (Australian) application cannot proceed as a Convention application.

A subsequent change in status of the foreign country to that of a Convention country under the Act will not overcome the objection, that is, the benefit of s29B cannot apply retrospectively.

Basic Applications Filed Before Intergovernmental Organisations

Under the Regulations, several types of documents may serve as a priority document for a Convention application. These include the documents filed at the same time as a basic application that is related to the Convention application.

Where the basic application is a PCT, EP, Eurasian Patent Organization (EA), African Regional Intellectual Property Organization (AP), or African Intellectual Property Organization application (OA), the patent request must clearly identify the basic document as being one of these types of application. By their nature, these applications imply that there is at least one Convention country designated in the basic application and, therefore, the patent request will have sufficient detail to satisfy the requirements of the Act. There is no requirement that the patent request additionally mentions at least one individual Convention country.

Basic Applications

In general, if a Convention country grants any form of protection for an invention for which a patent could have been obtained in Australia, an application for this form of protection in the Convention country may be used as the basis for a Convention application in Australia. This is called the ‘basic application’. Thus, in addition to applications for patents made in Convention countries, applications for other types of protection may serve as the basis for a Convention application.

Examples of other types of protection include:

an application for registration of a utility model (for example, in Japan);
a "Gebrauchsmuster" application (made under the laws of Germany); and
an application for a certificate of authorship (such as those provided in the laws of some European countries).

If the form of protection applied for in the Convention country is acceptable as the basis for a Convention application in Australia (for example, an application for a patent) but the particular application is for subject matter which is not patentable in Australia, there is no objection that the Australian application does not meet the requirements of a Convention application. However, a manner of manufacture objection will apply. Thus, for example, if an application in Japan for registration of a utility model is considered to be merely concerned with a new industrial design which is not patentable in Australia, no formal objection is to be taken that the Australian application does not meet the requirements of a Convention application. However, the examination report should indicate why the application is otherwise inadequate.

Basic application is a divisional or additional

A number of Convention countries have provisions in their laws for divisional applications and additional applications and such applications may be used as a basis for Convention applications. Where the basic application is an additional, the application in Australia does not have to be an additional. Similarly, where the basic application is a divisional, the application in Australia does not have to be a divisional.

Foreign Applications which are not Basic applications

A Convention application may be based on an application in a Convention country for protection of an invention that includes the word "patent". However, the word "patent" is not always conclusive that the matter for which the protection is afforded is ‘an invention’. For example, the US has "design patents", but these cannot be considered ‘basic applications’ as they do not afford protection to ‘an invention’ (see Anchor Wall Systems Inc. v Keystone Retaining Wall Systems Inc. (1996) APO 33). Where examiners have any doubts, the issue should be referred to a supervising examiner.

In Agfa-Gevaert A.G.'s Application [1982] RPC 441, it was held that Convention priority could not be claimed from a German registered design application for the purposes of the UK Patents Act 1977.

A Convention application cannot be based on a US application for a "re-issue" patent. A re-issue application cannot be the first application for an invention in a Convention country, since its subject matter must be essentially the same as the patent it replaces.

Timing Provisions

A Convention application must be made within 12 months from the date of the earliest basic application, unless that basic application is disregarded.

Where several applications disclosing the invention claimed in an Australian Convention application have been made in one or more Convention countries, the 12-month period is from the time of making the earliest of those basic applications.

Some countries have a system of protection which allows applicants to file an application with only a "provisional" specification, to which they can add a more complete specification at a later date. In this case, the 12-month period is taken from the date of the basic application (that is, the provisional) and not from the date of any subsequently filed specifications.

Basic Application Outside 12-Month Convention Period

If there are claims in a specification which are enabled by a disclosure in a basic application made more than 12 months before the date of filing of an Australian application, and s43(5) does not apply (see below), then those claims do not satisfy the conditions of reg 3.11 and cannot take the filing date of the basic application as their priority date (reg 3.13B). Examiners should object that the Australian application does not meet the requirements of a Convention application.

This is irrespective of whether those same claims are enabled by a disclosure of a basic application filed within the 12-month period permitted by reg 3.11.

Subsection 43(5)

Where the claims are enabled by the disclosure of both:

a basic application made more than 12 months before the filing date of the Convention application (the ‘earlier application’) and
a basic application filed within 12 months of filing the Convention application (the ‘later application’),

and the applicant wants the claims in the Convention application to take the filing date of the later application as their priority date, this is only possible if the earlier application can be disregarded for the purposes of the Act (s43(5)) (see also Mobil Oil Corporation's Application [1975] AOJP 1277, which was concerned with a corresponding, but non-identical, provision in the Patents Act 1952).

In order for s43(5) to apply, the following requirements must be met:

an earlier application must have been made in a Convention country for protection of the invention;
the earlier application must have been made more than 12 months before the filing of the Convention application (reg 3.14C);
the earlier application must have been withdrawn, abandoned, or refused without becoming open to public inspection (OPI) anywhere in the world;
the earlier application must not have been used as the basis of claiming a right of priority in any Convention country; and
a later application must have been made in a Convention country for the same invention for which the earlier application was made, and the later application must have been made by the same applicant who made the earlier application. Note that the earlier and later applications need not have been made in the same Convention country.

Without becoming “open to public inspection" is limited to the time when a Convention application is made for a patent in Australia.

Note that a special case exists with US continuation-in-part applications where the parent specification has been abandoned. The abandoned parent specification usually becomes OPI on the issue of the patent on the continuation-in-part application. Provided it was abandoned and not OPI when the Convention application was made in Australia, s43(5) can apply.

If an applicant indicates that an earlier application is to be disregarded under s43(5), examiners should consider the matter during examination.

Where the s43(5) requirements are met, the examination report should indicate that the earlier application has been disregarded.

If the requirements are not met, the report should explain the reasons why the earlier application cannot be disregarded. Examiners should also object that pending resolution of this matter, the application under examination does not meet the requirements of a Convention application.

Basic Applications Having a Parent Application (e.g. Continuations-in-Part)

Basic applications which are additional applications, divisional applications, and US continuations and continuations-in-part are, prima facie, subsequent applications for the same subject as an earlier (parent) application (in accordance with paragraph (4) of Article 4C of the Paris Convention). Consequently, if a Convention application is based on one or more of these types of applications and is filed more than 12 months after the parent application, prima facie the claims of the Convention application are not entitled to take the filing date of the basic application as their priority date unless the parent application is disregarded.

However, where the basic application derives from a parent application filed more than 12 months prior to the filing of the Convention application, the applicant should not be asked to file a certified copy of the parent application or a declaration that the parent application did not disclose anything claimed in the Convention application. It is implicit in the fact that the application invokes Convention rights that the applicant considers that the parent application does not disclose anything claimed in the Convention application. This also applies where it comes to the examiner's attention that a corresponding foreign application has been made in respect of the subject matter of the parent more than 12 months prior to the filing of the Convention application.

Consequently, examiners should consider the Convention application to meet the necessary requirements with priority determined from the basic application identified in the patent request.

Patent Requests and Entitlement for Conventions

Patent Request

The patent request must set out the number, date and country of origin in respect of the basic applications upon which the Australian application is based. The country codes, as specified in WIPO Information and Documentation Standard ST.3, are an acceptable identification of any particular foreign country.

The application is not entitled to proceed as a Convention application, and examiners should object accordingly when the request indicates that a Convention application has been made, but either:

the application in Australia was not made within 12 months of the date of the first basic application made in respect of the invention;
the number, date, or country of origin of the basic application identified on the patent request differ from other documents on file;
the applicant in Australia does not meet the definition of a "Convention applicant"; or
a copy of the basic specification, translation, or other relevant document is not provided when required.

In response to an objection, the applicant may, as applicable:

amend the patent request under s104 to convert the application to a non-Convention application (see Converting Convention Applications to Non-Convention, and Vice Versa) and proceed on that basis;
amend the patent request under s104 to correct wrong details of the basic application;
indicate that an earlier application is to be disregarded (see Basic Application Outside 12 Month Convention Period); or
request an extension of time.

Where the patent request does not indicate that a Convention application has been made, but other documents on file indicate that the applicant intended to invoke the Convention provisions, the applicant should be informed of the situation and allowed to make any rectifications as necessary.

Entitlement

The general provisions relating to notices of entitlement for Standard Patent applications are applicable to Convention applications. The applicant is required to make at least a generic statement that they have entitlement from an applicant of the basic applications listed in the patent request. Details of how entitlement is derived may be provided, however this is not required by the Commissioner, unless the Commissioner has information which puts the applicant’s entitlement to claim priority in doubt (see 5.4.2 Statement of Entitlement).

The notice is not required to state that the basic application was the first application made in a Convention country in respect of the invention the subject of the Australian specification.

Basic Specifications

Obtaining Basic Specifications

A copy of the specification relating to the basic application(s) (the basic specification) is not required, except in the following circumstances:

where third parties request a copy of the document;
in examination or re-examination, where there is a citation published after the priority date and before the filing date, or a whole of contents citation with a priority date after the priority date and before the filing date, of the case being examined;
in examination or re-examination, where there is a whole of contents citation having a priority date before the priority date of the case being examined; or
in opposition, when requested by the opponent.

During examination, if either the second or third circumstances arise and examiners have reason to believe that the claims are not entitled to the claimed priority date, they should check whether the relevant basic specification is available from Patentscope or another database (for example USPTO Public PAIR). If the document is present, a copy should be downloaded and added to the case file. Where the basic specification is not available, examiners should contact CEG (via email to era@ipaustralia.gov.au) with a request to obtain the document from WIPO. CEG will attempt to obtain the document either via the WIPO Digital Access Service (“DAS”) or directly from the International Bureau. If it emerges that the basic specification is not available within a reasonable time (about 3 weeks), examiners should issue a report with a request that the applicant provide a copy of the document certified according to reg 3.14D(1)(c) within 3 months (s43AA). It may also be necessary for examiners to request a translation at the same time as requesting the basic specification (see Translations of Basic Specifications below).

Note that the approval of a senior examiner must be obtained before issuing a request to the applicant to provide basic specifications.

If the applicant in response states that the basic specification is available via the WIPO DAS, examiners should again email CEG with a request to retrieve the document. CEG will verify that the Office was granted access to the document in the time allowed, inform examiners of this and retrieve the document. If the Office was not provided access in time, examiners should proceed on the basis that the time limit was not complied with. If access is provided, but for technical reasons the document cannot be retrieved from WIPO DAS, CEG will direct the applicant to file or make the document available within a further period of 2 months (reg 3.14D). CEG will then provide the document or advise that the time limit was not complied with. Failure of the applicant to comply with a request to provide basic specifications within the time limit will result in a loss of priority. If this situation arises, examiners should consult Oppositions before taking any further action.

Translations of Basic Specifications

The Commissioner will only request an applicant to file translations* of basic specifications where there is a validity-related issue in which the determination of the correct priority date is, or is likely to be, important. Examples of such circumstances are given in all points above except the first. It is not expected that the Commissioner will require translations to be filed on the request of third parties.

Where a basic specification is on file, but CEG have been unable to source an English translation thereof, examiners should assess the basic specification before requesting that the applicant provide a translation. Examiners should make use of qualified translators within the office (see 6.10.5 Examiners with Foreign Language Capabilities), or a machine-based translation (provided the basic specification is a published document), to initially assess whether a full translation is required. Similarly, an initial assessment of the figures (including chemical structures and amino acid/nucleotide sequences) can be used to determine whether a full translation is required.

If the basic specification is not available from an approved digital library (for example, Patentscope) and is obviously in a foreign language (such as Japanese applications or EP applications by French or German companies), then both the basic specification and the translation* should simultaneously be requested from the applicant.

*Note that for translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided.

Certification of Basic Specifications

A certified copy of a basic specification is only required when requested by the Commissioner.

A certification "by the competent authority" (as required by reg 3.14D(1)(c)) means a certification by a person authorised in the relevant jurisdiction to issue such certifications (see definition of “competent authority” in reg 1.3(1)). For example, where an application claims Convention priority from an earlier International or European Regional application, a copy of the basic specification may be certified by a person authorised to issue such certificates in the International Bureau or EPO respectively.

Examiners should not question any certifications appearing either on official covering sheets (with or without official seals), or in any other form. However, where the certification itself introduces an element of doubt as to whether it would satisfy the necessary requirements, the matter is to be referred to a supervising examiner.

Examiners are not required to check basic specifications to see whether any pages are missing. Where examiners find that a page appears to be missing from a basic specification, they may assume, having regard to the accompanying certification by a responsible official, that the original specification filed in the Convention country was similarly deficient. Accordingly, no objection is to be taken that part of the basic specification is missing, and no objection is to be taken to the certification of the basic specification.

Date of Basic Application

The date of the basic application stated on the patent request should be taken as correct, unless there is evidence on file to the contrary. In this case, examiners should object that the date shown on the request is prima facie incorrect.

In certain circumstances, a basic application can have an effective filing date different from the actual filing date (ante-dating and post-dating). However, when this is the case, there must be supporting documentation.

See:

La Soudure Electrique Autogene S.A.'s Application [1939] 56 RPC 218; and
Poly-Resin Products Ltd.'s Application [1961] RPC 228.

Convention Priority Dates

The priority date of the claims of a Convention application is determined by reg 3.13B (see 5.6.1.1 Priority Dates and Filing Dates).

In general, examiners will not need to determine the priority date of the claims during examination. An exception to this occurs if a document is found that would constitute a citation against a claim only if the claim takes a priority date of the date of filing of the application. Where claims take a later priority date because a basic application is filed outside the 12-month Convention period, examiners should follow the practice outlined in Basic Application Outside 12 Month Convention Period.

A Convention application may also derive priority under other provisions of the Act and Regulations, for example, by being associated with a provisional application or by being a divisional application.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023