Legal Project Management Plan & Checklist
Purpose of this Guide: Open this plan when your client has invented something new and wants to protect it with a standard patent in Australia. Use this plan from the initial intake and prior art search all the way through to grant and the setup of annual renewal obligations. The plan suits both individuals and corporate applicants who have not yet filed any patent application and want to secure a 12-month provisional priority date first. Verify current guidelines on the official Victorian Legislation. Access services via the Victorian Courts.
Jurisdiction: Australia - Commonwealth. All applications are filed with IP Australia and governed by the Commonwealth Patents Act 1990. There are no forks in this plan.
The Process at a Glance: The process begins with verifying inventor ownership, executing a retainer, and conducting a prior art search across IP Australia's AusPat database and international patent indexes. A patentability advice letter is then delivered to the client. A provisional specification is drafted, reviewed with the inventors, and lodged with - this establishes the 12-month priority date. Over the following year, the invention is refined, improvements are captured, and the complete specification with legally defined claims is drafted. The standard complete application is lodged before the 12-month provisional deadline, claiming priority from the provisional filing date. A formal examination request is submitted, and when the examination report arrives, any objections relating to novelty, inventive step, or claim clarity are addressed through claim amendments and written arguments. Once accepted, the application is advertised in the Official Journal of Patents for a 3-month opposition window. If no opposition is filed, grant fees are paid and the sealed patent certificate is retrieved. Annual renewal fees are then set up from the 4th anniversary of the complete filing date.
Key Legislation and Case Law: Patents Act 1990 (Cth) - s 7 (novelty and inventive step), s 15 (entitlement to a patent - inventor or assignee), s 18 (patentable inventions - manner of manufacture, novelty, inventive step, not excluded), s 59 (opposition to acceptance, 3-month window after advertisement), s 67 (grant of standard patent). Patents Regulations 1991 (Cth) - specification formatting requirements. Filing fees (current as at 2025-26): provisional application $100; complete standard application $400; examination request (Form 3) $550; acceptance fee $300 base (plus $125 per claim over 20); annual renewal fees apply from the 4th anniversary of complete filing. Key case: D'Arcy v Myriad Genetics Inc [2015] HCA 35 - biological materials and genetic sequences are not patentable subject matter in Australia. Mann v Paterson Constructions Pty Ltd [2019] HCA 32 - not directly a patent case but relevant to the scope of IP assignment in construction/employment contexts. Novelty is assessed against the world-wide prior art base under s 7(1). The inventive step threshold requires that the invention not be obvious to a person skilled in the relevant art: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59.
* Disclaimer: We're nobody's lawyer, because we aren't lawyers. You are, so you know better than to take legal advice from an app. We also aren't accountants or dog trainers - just digital spirit guides taking zero liability for any of this. This site exists to gather the collective knowledge of practitioners like you. Verify everything and submit your feedback on the AU Patent Prosecution & Filing matter plan to improve the playbook. THIS IS NOT LEGAL ADVICE, it's a request for input.
This legal matter plan provides a structured workflow for AREA_IP_PATENT cases, outlining the standard PROC_REGULATORY process. Utilize these tracking templates to manage your legal cases efficiently.
Verify client conflict search, establish retainer, conduct prior art search, and deliver patentability advice.
Verify all prerequisite documentation has been obtained, cross-reference against the statutory requirements for this matter type, and confirm compliance with practice direction protocols.
Prepare the relevant forms and supporting materials required under the applicable legislation, ensuring all mandatory fields are completed and all attachments are properly certified.
Draft and dispatch formal correspondence addressing the procedural requirements at this stage, including any required notices, requests for information, or proposals for resolution.
Draft provisional patent specification and drawings, conduct review, and lodge provisional application.
Coordinate the collection and review of all financial documentation required for disclosure, including statements, valuations, and supporting schedules as mandated by the rules.
Conduct a thorough review of all filed materials to ensure compliance with court requirements, verify service obligations have been met, and prepare for the next procedural milestone.
Assess the strategic considerations for interim applications, prepare supporting evidence, and draft the necessary documentation for urgent or time-sensitive relief sought.
Assess provisional developments, draft complete specification with claims, and lodge standard patent application.
Verify all prerequisite documentation has been obtained, cross-reference against the statutory requirements for this matter type, and confirm compliance with practice direction protocols.
Prepare the relevant forms and supporting materials required under the applicable legislation, ensuring all mandatory fields are completed and all attachments are properly certified.
Draft and dispatch formal correspondence addressing the procedural requirements at this stage, including any required notices, requests for information, or proposals for resolution.