For practitioners involved in filing, obtaining, and enforcing patents in Australia, this seminar will provide a systematic explanation by a patent attorney of essential information for Japanese companies’ patent strategies in the APAC region. Focusing on the Patents Act 1990, the session will cover IP Australia’s practices, PCT national phase entry, the unique requirement of “Manner of Manufacture” derived from English common law,the Innovation Patent (abolished in 2021), patent term extensions (PTE) for pharmaceuticals, and enforcement of rights in the Federal Court—all essential information for Japanese companies’ patent strategies in the APAC region—will be systematically explained by a patent attorney.
Key Points of This Article
AUSTRALIA PATENT
A comprehensive guide to the patent system and practice in Australia—a key hub in the APAC market—written by a patent attorney. This guide systematically explains 12 key topics, ranging from IP Australia filings to Manner of Manufacture, PTE, and enforcement of rights in the Federal Court.
Australian patent practice is a hybrid system of British-style common law and statutory law, centered on the Patents Act 1990, with the Patents Regulations 1991, the IP Australia Examination Manual, and case law (Federal Court and High Court) governing applications, examination, and disputes.Distinctive features include the “Manner of Manufacture” requirement and the response following the abolition of Innovation Patents.
Four Key Points to Understand in Australian Patent Practice
The "primary law" of the Australian patent system is the Patents Act 1990, which has evolved into the current system through multiple amendments. Core provisions include the definition of an invention (§18), novelty and inventive step (§§7-8), application procedures (§§29-50), the scope of patent rights (§13), compulsory licensing (§133), and criminal penalties.The 2021 amendment abolished the Innovation Patent, consolidating the system into a single Standard Patent.
IP Australia is responsible for patent examination and registration. It boasts world-class digitalization—all procedures are completed via “IP Australia Online Services.” The Patent Office Hearings makes quasi-judicial decisions.
Abolition of the Innovation Patent: Previously, the Innovation Patent (8-year term, non-substantive examination) existed alongside the Standard Patent (20-year term), but new applications filed on or after August 25, 2021, are no longer accepted. Existing Innovation Patents remain protected until their expiration. Currently, the only practical option is the Standard Patent.
| Item | Direct Filing | Paris Convention Priority | Via PCT |
|---|---|---|---|
| Australian Filing Deadline | Anytime | 12 months from the Japanese filing date | 31 months from the priority date |
| Language | English | English | English Use the English specification as is |
| Provisional application | Available (Full specification must be filed within 12 months) | Standard Full Specification | Based on the PCT specification |
Time Required: Approximately 3–5 years from filing to registration in a smooth case. Can be shortened to 1–2 years by utilizing the JPO-IP Australia PPH.
| Item | Fee (AUD) | Conversion to Japanese Yen |
|---|---|---|
| Application fee | AUD 370 | Approx. 35,000 yen |
| Request for Examination Fee | AUD 490 | Approx. 46,500 yen |
| Filing fee | AUD 250 | Approx. 24,000 yen |
| Claim surcharge (over 20) | AUD 125 per claim | Approx. 12,000 yen/claim |
| Annuity (5th year) | AUD 350 | Approx. 33,000 yen |
| Annuity (10th year) | AUD 590 | Approx. 56,000 yen |
| Pension (15th year) | AUD 1,170 | Approx. 110,000 yen |
| Pension (20th year) | AUD 2,510 | Approx. 240,000 yen |
Australia’s most important test: Derived from the 1959 High Court decision in the NRDC case (National Research Development Corporation v. Commissioner of Patents). It holds that “artificially created things that have economic value in the fields of industry, commerce, or trade” are patentable. Pure abstract ideas, laws of nature, business methods per se, and computer programs per se are not patentable.
| Case Law | Key Issues |
|---|---|
| NRDC (1959) | Established the "Manner of Manufacture" test |
| D'Arcy v. Myriad Genetics (2015) | Denial of Patent Eligibility for Isolated DNA (Human Heritage) |
| Aristocrat Technologies (2022) | High Court 4-3 Decision on Patent Eligibility of Electronic Gaming Machines (Tied Vote) |
| Encompass v InfoTrack (2019) | Non-patentability of software implementations of business methods |
Remedies in the Federal Court of Australia
Post-grant invalidation proceedings may be brought before the Federal Court or IP Australia. Re-examination is also available upon both voluntary application and third-party request.
Australia joined the PCT in 1980. National phase entry is possible within 31 months of the priority date. By utilizing the JPO-IP Australia PPH, early examination can be obtained based on the claims granted in Japan.
JPO-IP Australia PPH: Operational since 2008 and available free of charge. If the claims correspond to those granted in Japan, IP Australia grants priority treatment for early examination. This reduces the typical processing time from 3–5 years to 1–2 years.
The term of a patent is 20 years from the filing date. Annual fees are payable starting from the fifth year (included in the filing fee for the first four years). A six-month grace period is available for late payments.
PTE System (§70)
| Item | Japan | Australia |
|---|---|---|
| Application Language | Japanese | English |
| Minor Patent System | Utility Model (10 years) | Abolition of Innovation Patents (2021) |
| Deadline for Requesting Examination | 3 years (from the filing date) | 5 years (from the filing date) |
| Eligibility for Patent Protection | "Technical concept utilizing natural laws" | Manner of Manufacture (NRDC) |
| PCT National Phase Entry | 30 months | 31 months |
| Judicial Structure | Patent Office → Intellectual Property High Court | IP Australia → Federal Court |
| Additional Damages | None | Available (Additional Damages) |
The Australian patent system is characterized by the "Manner of Manufacture" test and the consolidation of patents into a single "Standard Patent" following the abolition of Innovation Patents. For Japanese companies to succeed in their patent strategies in the Australian market, it is crucial to combine the use of the JPO-IP Australia PPH program with effective enforcement of rights in the Federal Court, and in the case of pharmaceuticals, to ensure that PTE applications are not overlooked. Please also see our PCT international patent applications and patent application services.
EVORIX Intellectual Property Law Firm provides comprehensive support for patent applications and enforcement in major APAC countries, including Australia. Our patent attorneys, with extensive practical experience and working in collaboration with local agents, handle everything from addressing the Manner of Manufacture test and PPH strategies to utilizing PTE and responding to infringement cases in the Federal Court.
*This article is based on the above primary sources and official information as of April 2026 and is intended to provide general information. As laws and regulations are subject to change, we recommend consulting primary sources and experts for the latest information. For specific decisions regarding individual cases, we recommend consulting experts, including local representatives.
AUTHOR / Author
Takefumi Sugiura
Representative Patent Attorney, EVORIX Intellectual Property Firm
Assists clients across a wide range of industries—including IT, manufacturing, startups, fashion, and healthcare—from patent, trademark, design, and copyright applications through to trials and infringement litigation. Also well-versed in intellectual property strategies for cutting-edge fields such as AI, IoT, Web3, and FinTech. Member of multiple organizations, including the Japan Patent Attorneys Association, the Asian Patent Attorneys Association (APAA), and the Japan Trademark Association (JTA).