5.3.3.2 Specific Requirements for the Patent Request

Also in this Chapter:

• 5.3.3.1 General requirements for approved forms

Key Legislation:

Patents Regulations:

• reg 3.1 Prescribed documents: patent applications
• reg 3.1A Applicant taken to be nominated person​​​​​​​ 
• reg 22.15 Requirements for filing documents
• reg 22.16 Consequences for certain documents not meeting filing requirements

Approved Forms:

• Patents Forms 

Related Chapters:

• 5.3.1.2 Credible address for service
• 5.7.1 What can be amended and when
• 5.7.2 Amendment of the patent request and other filed documents

On this page

• Overview
• Examination practice:
  • Applicant and inventor names
  • Address for service
  • Details of related applications. 

Overview

Mandatory elements of a patent request are:

• the name and address of the applicant;
• the names of the inventors;
• an address for service; and
• details of related applications.

In general, a patent request must be in the approved form. However, if the relevant information can be ascertained from the correspondence, the request will be regarded as having met the requirements.

For national phase applications it is not necessary to file a separate patent request, as the front page of the PCT pamphlet provides the required information (e.g. Applicant and inventor are shown at INID Codes 71 and 72 respectively).

Examination practice

Applicant and inventor names

The name(s) of the applicant and inventor must appear on the patent request. If a name is written in another alphabet, transliteration into the Latin alphabet (that is, as used in English) is required.

The applicant name on the request is the name that will ultimately appear on the certificate of grant.

The name of a nominated person may also appear on the patent request. However, this has no effect as the applicant is taken to be the nominated person (reg 3.1A).

Issues such as no inventor being named or inconsistencies in names are generally raised by CEG. However, if examiners become aware of a significant issue, they should raise an objection that it is not clear who is the applicant/inventor.

If there are conflicting statements, the applicant/inventor name indicated on the patent request is taken to be correct.

Address for service

The applicant must indicate an address for service on the patent request. This must be in Australia (or New Zealand) (see 5.3.1.2 Credible address for service).

Applicants can provide a different address for correspondence, however there is no legislative requirement to do so. This address does not need to be in Australia. Where no address for correspondence is provided, all correspondence will be sent to the address for service.

Examiners should request clarification from the applicant if there are conflicting addresses for correspondence and the issue has not been queried by CEG. Reports should be sent to the address that appears in the most recent item of correspondence.

Details of related applications

The patent request must identify any related applications in order to associate it with the complete application. For example, the patent request must list the provisional application and filing date to be associated with it. Similar details are required for divisional applications, patents of addition and convention applications.