Review translation requirements for PCT National Phase Entry

Issue summary

There has been some concerns raised that the translation requirements for PCT National Phase Entry (NPE) in Australia are confusing and place a burden on applicants. This is due to the requirement to file a translation including any pre-existing amendments under the PCT at NPE, while in some jurisdictions a translation of the original specification will suffice.

These concerns could be met by allowing that the translation filing requirements would be met by supplying a translation of the specification as filed as well as any pre-existing amendments, but with the proviso that if a translation of the amendments is not filed then these will be disregarded. This would involve amendments in the Patent Regulations and the Australian chapter of the PCT Applicant’s Guide.

History

• Policy development 4 September 2017
• Legislative drafting 26 March 2018
• Consultation 16 November 2018 to 21 December 2018
• Legislation registered 25 March 2019
• Completed 25 September 2019

Comments

The issue was addressed by amendments in the Intellectual Property Laws Amendment (PCT Translations and Other Measures) Regulations 2019 Schedule 1. The commencement of the amendments is delayed for six months to allow users of the IP system sufficient time to prepare for the changes.

The making of the amendments was accorded high priority as this is a relatively straightforward-to-implement fix that will improve IP Australia's customers' experience.

See also item 22.