Verified translations of international (PCT) patent applications not published in English will no longer be required to support entry of the application into the Australian national phase following impending changes to Australia's patent legislation.
From 25 September 2019, amendments brought about by the Intellectual Property Laws Amendment (PCT Translations and Other Measures) Regulations 2019 will:
- Remove the requirement for anyone who files a document translated into English to always provide a certificate of verification of the translation. As per the Explanatory Statement, most translations are accurate and do not give rise to any concerns, making the requirement for certificates of verification an unnecessary burden on most applicants. The amendments will remove this unnecessary burden, better aligning the practice of the Australian Patent Office with the practice of most major English-language patent offices including the patent offices of Canada, the United Kingdom and the United States of America; and of the European Patent Organisation.
- Clarify the translation requirements for PCT applications to enter the national phase in Australia as follows:
- Require the filing of an English translation of the PCT specification as originally filed in another language or as rectified under Rule 91 of the PCT (obvious mistakes). This will be used to assess the allowability of amendments to the complete specification after a PCT application enters the Australian national phase as well as the priority date of the translated text of any Article 19/34 amendments. However, as per current practice, if the PCT application was not filed in English but later published in English by the International Bureau, then no English translation need by filed at the time of national phase entry.
- The option to simultaneously file translations of Article 19/34 amendments with a request for national phase entry so the Article 19/34 amendments are automatically incorporated into the specification.
- If Article 19/34 amendments are not submitted at the time of national phase entry, they will not form part of the specification unless resubmitted later as a voluntary amendment.
- Permit the correction of errors in translations of the original PCT application such as where a translation of the wrong specification, missing parts or incorrect wording has inadvertently been provided. An error or omission in the translation of the specification of a PCT application, or the filing of a corrected translation, will not invalidate the entry into national phase and will not be taken as an amendment of the specification. Instead, it replaces the originally filed translation of the specification, with effect on the day the originally filed translation was filed.
- Empower the Australian Patent Office to require someone who files a translation of a document to file a certificate of verification of the translation. According to the Explanatory Statement, this will be invoked if the Patent Office has reasonable doubts about the accuracy of a translation. It is expected that the Patent Office would not need to exercise this new power routinely.
The changes will apply to PCT applications that enter the national phase from 25 September 2019 and to translations of other documents that are filed from that date.
Removing the requirement to file verification certificates will ease the burden on patent applicants and professionals alike; the new provisions pertaining to the correction of errors is in favour of applicants. The changes will also provide flexibility in filing Article 19/34 amendments.