Whilst much of our practice occurs in Australia and New Zealand, we also have a significant practice throughout the wider South Pacific region. Following on from our recent Fiji update, in this article we focus on a country with close ties to Australia - Papua New Guinea.
Papua New Guinea has a robust and independent system for governing patent and design rights following the adoption of the Patents and Industrial Designs Act 2000. Papua New Guinea is also a member of the Paris Convention and a contracting party to the Patent Cooperation Treaty (PCT), meaning that both convention priority claims and nationalised PCT applications can be filed.
The Intellectual Property Office of Papua New Guinea (IPOPNG) is a department within the Investment Promotion Authority (IPA) and deals with all registerable intellectual property rights and laws in Papua New Guinea, as well as providing information on copyright matters. Registers of patents, trade marks and industrial designs are held by IPOPNG. The Registrar of Patents is responsible for maintaining the register of patents as well as reviewing policy and legislation relating to patents.
Australia and Papua New Guinea have a close and long-standing relationship. As Australian Registered Patent Attorneys, we can file directly and electronically with the IPOPNG, although a local agent is required as an Address for Service within Papua New Guinea to receive and forward any official notifications to us.
Following recent modernisation improvements, the Patent Office now accepts most documents as electronic lodgements (except for some lodgement forms which still require the originals to be filed). This has been a significant improvement, as previously all documents were required to be sent in hard copy by courier, which could lead to delays, additional costs and confusion over filing and lodgement dates.
Once a patent application is filed, prosecution proceeds along the following steps:
- The Application is first examined for compliance with formal
requirements without considering patentability. Amendments required
in response to an adverse Formalities Report may include:
- amending the abstract to better describe the problem being solved by the invention and the gist of the technical solution;
- inserting reference numerals from the drawings to the claims (to better understand the claimed invention); or
- other clarity issues.
Based on our recent experience, it can take up to four years for a Formalities Report to issue.
- Once the formal requirements are passed, an Examination Request notice will issue. Preferably, examination will be requested based on the allowability of a corresponding application (including a priority application) in a major foreign jurisdiction (such as Australia, Europe, the United States, Japan, Korea, Canada or Singapore), and the claims be amended to match those allowed elsewhere. The prosecution history of that corresponding application is also filed. Given the delays in the Patent Office, it would be expected that a corresponding application will have been examined in at least one other jurisdiction by the time an Examination Request issues. Based on our recent experience, it can take up to five years after requesting examination before a Report or a Notice of Allowance issues. Alternatively, if no corresponding application has been allowed, or if Papua New Guinea is the only jurisdiction pursued, substantive examination can be requested. However, significant further delays (i.e., greater than five years) are expected.
- Once the Examiner considers that the amendments are suitable and the claims are patentable, the application will be accepted. After payment of the issue fees, the patent will be granted soon thereafter.
Extensions of Time
Extensions of time, which can be requested either before or after a deadline passes, are generally easily obtained in Papua New Guinea with payment of a small fee. This applies to all deadlines, including the national phase entry of a PCT application. Missing a deadline rarely results in a permanent lapsing of the application or patent.
Official fees are charged in Kina, the official currency of Papua New Guinea. The exchange rate is beneficial (1 Kina is currently worth about USD0.28 or EUR0.24) and the fees are relatively modest. For example, renewal fees range from K170 (about USD50) in the second year to K1400 (about USD400 for the 19th year. Hence, patent protection in Papua New Guinea is less expensive than in other jurisdictions.
Whilst prosecution is relatively straightforward (if corresponding application(s) have been accepted), including extensions of time being easily obtained even after a deadline has passed, and costs are relatively low compared to other jurisdictions, delays in the Patent Office can mean that a patent can take up to ten years to grant.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.