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2.21.3.3 Basic Applications

Date Published

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. 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 (e.g. in Japan);

  • a "Gebrauchsmuster" application (made under the laws of Germany); and

  • an application for a certificate of authorship (e.g. as 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, e.g. 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.

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.


Basic Application Requirements Not Met

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 patent protection is afforded is an invention, for example, when used in US "design patents" (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.

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