Since our last Around Australia in a Minute, the past four months have been a productive period for the Australian intellectual property profession seeking to drive efficiencies, deliver thought-provoking Federal Court decisions, and tackle the surge in scam activity in the IP system. As a Wrays Principal and Co-Vice President of The Institute of Patent and Trade Mark Attorneys of Australia (IPTA), I have the opportunity of engaging widely with the IP profession. Here are some of the key recent highlights from across Australia.
The 2025 IP Australia Report is Released
The 2025 Australian IP Report, published by IP Australia, was released last month and provides the latest data and insights on the use of intellectual property rights in Australia. Key highlights from the 2025 report show that:
- Trade mark filings increased 2.8% from the previous year and reached the second-highest level on record;
- Design right filings hit a record high with 8.9% growth;
- Standard patent applications declined by 3.3%, largely due to a fall in US applications; and
- Plant breeder’s rights fell by 1.7%.
On the international front, China continues its trend as a leading force across multiple Australian IP categories. Our full summary of the report can be found here.
NOCO Decision addresses “Best Method” requirements for divisional patent applications
Australia is unique because it requires a patent application to include the “best method” of performing an invention. In recent years, this has become a powerful go-to revocation ground following a number of successful challenges. One of those challenges was set out in the Federal Court decision in Dometic Australia v Houghton Leisure products Pty Ltd (2018] FCA 1573 (the Dometic decision). The Dometic decision found that the relevant date for disclosing the best method in a divisional application is the filing date of the divisional application. This effectively means that any improvement made in an invention between the filing date of a parent application and its divisional application, which could be many years, arguably needs to be included in the divisional application at its time of filing to satisfy the best method requirement. This places a significant burden on applicants and their patent attorneys, in addition to potentially creating lack of support issues.
However, most recently a Federal Court decision has addressed this best method peculiarity of Australian patent law and the prosecution of divisional patent applications.
In The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887, (the NOCO decision) the Court, without stating that the Dometic decision was wrong, considered that the relevant date for disclosing the “best method” in a divisional application is the effective filing date of the parent application (or the PCT filing date). This commonsense approach resulted in a collective sigh of relief amongst Australian patent attorneys. However, because the NOCO decision was not issued from a higher Court than the Dometic decision (both were first instance Federal Court decisions) it should be stressed that the NOCO decision has not necessarily resolved the “best method divisional application” issue. It may, however, provide divisional patent owners greater latitude for avoiding a successful best method revocation challenge.
TTIPAB Updates Competencies Review
The Trans-Tasman IP Attorneys Board (TTIPAB) administers the regulatory and disciplinary regimes for patent and trade mark attorneys in Australia and New Zealand. Over the last 18 months, the TTIPAB, in consultation with Strategic Project Partners (SPP), conducted a review to assess the competencies required for how patent and trade mark attorneys’ skills are defined, acquired, and maintained. The Report on the Competencies Review has recently been published and highlights needs for practical pre-registration experience, stronger international IP coverage, and more structured work experience. Specifically, SPP made nine recommendations including: a guiding statement of registration objectives; a formal competency framework; de-coupling patent and trade mark knowledge; improved course accreditation; and enhanced Statement of Skill requirements. The Board has accepted several recommendations in principle, while others remain under consideration. Next steps include developing an implementation strategy and further stakeholder consultation.
Updated Guidance Regarding Excluded Designs
Excluded designs are designs that are removed from a filed design application by amendment, and which are then subsequently filed as a separate application. On 2 May 2025, the Registrar of Designs issued guidance confirming that excluded design applications must be filed after, or at the same time as, a request to amend the initial application under the Designs Act 2003. While this order is now mandatory, the Registrar will treat past filings made in the wrong order as valid and able to claim the original priority date. Further, applicants with pending non-compliant applications are encouraged to refile (fees waived). To prevent future errors, IP Australia has updated its guidance, introduced a three-day delay before processing amendment requests, and reminded applicants that it is their responsibility to ensure correct filing order. The full guidance report can be found here – Registrar of Designs guidance regarding excluded designs | IP Australia
Changes to Notifications for Patents with Excess Claims
A recent change in the way that excess claims fees are charged means that fees for claims in excess of 20 claims, will be payable within one month from the issue of the first examination report. As a result of this change, Wrays’ standard practice is to recommend that any necessary reduction in claims to minimise fees should be made at the time of, or shortly after, requesting examination. For expedited or Patent Prosecution Highway requests, applicants are encouraged to reduce claims at the time of filing.
As a fallback, from 1 April 2025 IP Australia will notify standard patent applicants about six months before a first examination report is expected to issue, regardless of claim numbers. This is done with a view to prompting applicants to make necessary claims amendments to minimise fees.
Update on Australia’s Trade Mark Email Scam
In our last edition of Around Australia in a Minute we highlighted the Trade Mark scams circulating in Australia, which was creating major headaches for business owners, IP professionals and IP Australia. These fraudulent emails, often impersonating registered patent and trade mark attorneys, offer to assist protecting or enforcing an organisation’s IP rights. The scams are still circulating and becoming increasingly sophisticated, now using genuine Australian Business Numbers and convincing websites. The Australian IP profession continues to urge IP rights holders to remain vigilant and always verify the credentials of any attorney before engaging their services. Details in relation to identifying scams, and examples of scam communications can be found here. Any fraudulent communication should be reported to IP Australia’s fraud control team at fraud.control@ipaustralia.gov.au