FOR IP PROFESSIONALS

Best Practice Guide for Filing a Specification

This best practice guide is based upon, and should be read with, the formality requirements of Schedule 3 of Australian Patent Regulations. However, it does not cover all the requirements of schedule 3. Particularly those relating to terminology and signs, and matters that are considered scandalous. If you are in doubt about these requirements provided in this guide, you should consult the schedule directly.

It is also based on the requirements under the Patent Cooperation Treaty (PCT), recommendations provided by WIPO Standard ST.22 and the common application formats (CAF) accepted by the Trilateral Offices (USPTO, EPO and JPO).

Guidance for the preparation and filing of international applications under the PCT (including using the PCT-safe software) is available from the WIPO website.

Benefits of following this Best Practice Guide

Following this guide will help you draft an application that is in the form approved by the Commissioner and conforms to the requirements of Schedule 3 of the Australian Patent Regulations.
Consistency with the format of applications required in other IP Offices such as the USPTO, EPO and JPO, without requiring further major modifications.
New specifications filed in Australia in paper form can be accurately captured using Optical Character Recognition (OCR) technology. Theis will facilitate application processing and enhanced searching capabilities across Australian specifications.
Ideal basis for future developments of applications filed electronically using text-based XML.

Preparing your Application

Sections of the Application

Your application should be placed in the following order:

a. Patent Request
b. Description
c. Claim/s
d. Abstract
e. Drawing/s (if applicable)
f. Sequence listing (if applicable)

Each section must start on a new page.

Patent Requests

Patent Request forms

The official forms for requests have been approved by the Commissioner of Patents and request not on the relevant official form must still conform to it. In particular, any instructions on the approved form must be followed and information indicated as mandatory must be provided.

If you are not using the official form, the following requirements for page layout, margins and fonts apply unless otherwise indicated.

Page Layout

The size of the sheets must be A4 (21cm x 29.7cm).
Landscape orientation must not be used unless for pages that have drawings, tables, chemical or mathematical formulae that would not fit in a portrait orientation.
Pages must be printed one sided.
Pages of a specification must be sequentially numbered beginning with "1".
Page numbers must be centred at the top of each page and should be located 0.5cm from the margin (See Appendix I).
Paragraphs in a specification should be sequentially numbered from the first paragraph of the description, contained within brackets beginning with "[0001]". See Appendix II for an example of description page.
Paragraphs should be left aligned. Each paragraph number should align to the first line of each paragraph. See Appendix II for an example of a description page.
The space between the paragraphs should be at least twice the intra paragraph line spacing.
Line numbering should not be used.
All pages should contain only one direction of text.
Text must be set at 11/2 line spacing.
Handwritten text paragraphs or annotations should not be used.
All characters should be solid black on a white background.

Margins

Each sheet of Abstract, description and claims must have the left hand margin set at least at 2.5 cm and all other margins set at least at 2cm (see Appendix I).

Each sheet of drawing must have the top and the left margins set at least at 2.5 cm, right margin set at least at 1.5 cm and bottom margin set at least at 1cm.

Fonts

All text must be presented in letters the capitals of which are not less than 0.21 cm high, in a dark colour and be indelible. As a guide, a minimum font size of 12 points is acceptable.

The fonts should be in solid black.

The preferred fonts are:

Mono spaced family: OCR-B, Courier New, Free Mono
Serif family: ITC Officina Serif, Times New Roman, Free Times
Sans serif family: Verdana, ITC Officina Sans, Arial, Helvetica, DejaVu Sans

Narrow and cursive fonts should not be used.

Bold and italic styles, and underlined text should not be used.

Description

The list below shows the titles, sub-titles and order that should be used within the description. The titles in bold should be included in the application. If due to the nature of the invention, the section titles are not suitable, alternative titles may be used.

Title of Invention or Title
Technical Field or Field
Background Art or Background
Summary of Invention or Summary

Technical Problem
Solution to Problem
Advantageous Effects of Invention

Brief Description of Drawings (if applicable)
Description of Embodiments

Examples
Industrial Applicability
Reference Signs List (If applicable)
Reference to Deposited Biological Material (f applicable)

Sequence Listing Free Text (if applicable)
Citation List (if applicable)

Patent Literature (If applicable)
Non-Patent Literature (If applicable)

Paragraphs should be left aligned. Each paragraph number should align to the first line of each paragraph. See Appendix II for an example of a description page.

Description must not include drawings but may include chemical or mathematical formulae and/or tables where necessary.

The section titles and titles within the description should not be numbered.

Claims

Claims must commence on a separate page.
Each claim must be numbered sequentially beginning with "1".
Each claim number should align to the first line of each claim.
The first line of text of each claim should be right-indented with respect to the claim number by at least 1cm allowing for a clean separation between the first line of the text of the claim and the claim number (see Appendix III).
Claims must not include drawings but may include chemical or mathematical formulae and/or tables where necessary.

Abstract

Abstract should be between 50-150 words (see Appendix V).
Abstract must not include drawings but may include chemical or mathematical formulae and/or tables where necessary.
Abstract page should not be numbered

Drawings

Drawings must commence on a separate page.
Images and drawings must be executed in durable, black, dense, dark, uniformly thick and well defined, lines and strokes without colouring.
Greyscale images should not be used as information is lost when scanning them or converting them to black and white.
Each drawing or figure should be numbered separately and labelled by a sign to indicate that it is a drawing (see Appendix IV).
Drawing pages must be numbered showing the page number and total page numbers for example 1/2, 2/2.
Drawings must not be included in the description, claims or abstract.
Drawings must not contain a frame surrounding the drawings.
A drawing must not include text, other than a word or words necessary to the understanding the drawing.

Tables and Formulae

Tables, chemical formulae and mathematical formulae should be separated from text paragraphs (see Appendices VI to VIII).
Tables, chemical formulae and mathematical formulae should be separated above and below text paragraphs by a clear space of at least 1 cm across the width of the page.
Tables should contain one direction of text
Tables should have borders. The borders should be solid lines having a minimum thickness of 1.5 points.
Each Table, formula or mathematical equation should be labelled by a sign to indicate that it is a table, formula or equation i.e. Fig. 1, Table 1, Math. 1, Chem. 1, Formula 1, Equation 1 or Compound 1.

Nucleotide and/or Amino Acid Sequence Listings

Sequence listings should be submitted in electronic text format on physical media. The format should be consistent with that of the PCT Administrative Instruction Annex C.

Amending your Application

Form for amendments

Amendments to the patent request and specification (including drawings) must be made by means of substituting one page or document for another page or document. Amendments specifying deletions and/or insertions by page and line numbering or otherwise are not permitted.
A statement of proposed amendment on a separate sheet or sheets is also required. This must include the application number and an itemised list of the amendments proposed, numbered consecutively. The consecutive numbering must continue in any further statements filed for the application to ensure that amendments ultimately allowed can be clearly identified.
For amendments to the specification, an additional copy of each substitute page marked to indicate the nature and location of the proposed amendments is required. It should not merely indicate that the page is new or substituted unless it is impractical to indicate where each change has been made to the page.

Amendments made to description:

Where amendments require new paragraphs to be inserted, then the new paragraphs should be allocated the same number as the preceding paragraph followed by an alphabet starting with letter (a). For example, if two new paragraphs are inserted between paragraphs [0001] and [0002] then the new paragraph numbering between paragraphs [0001] and [0002] should be [0001a] and [0001b] (see Appendix II-A).
Where amendments require paragraphs to be deleted, then a comment stating, "paragraphs [number/s] intentionally deleted" should be placed in place of those deleted paragraphs. For example, if two paragraphs after paragraph [0001] are to be deleted then the new paragraph numbering should be [0001], [paragraphs 0002-0003 intentionally deleted], [0004] (see Appendix II-B). Where additional pages are required because of amendments, then additional pages should be allocated the same Arabic numeral number as the preceding page followed by an alphabet starting with letter (a). For example 1a, 1b, 1c etc. If a page is deleted, then a blank page with a statement "page intentionally left blank" should be inserted in place of the deleted page.

Amendments made to claim/s:

Where amendments add or delete one or more claims, claim numbers and page numbers should be re-numbered consecutively.

Amendments made to drawing/s:

Where amendments add or delete one or more drawings, the drawing numbers and page numbers should be re-numbered consecutively.

Filing your Specification

Means of Filing your Specification

Specifications should be filed using one of the following means of filing:

In person at one of our IP lodgement points
Via post
Via fax
Via our online services.

Electronic Attachment Formats

Specifications filed online as attachments should be in acceptable electronic formats, which include PDF (for Abstract, description and claims) and TIFF or JPEG (for drawings). Electronic files must not be locked or password protected.

Use of Physical Media

Specifications in paper form exceeding 1000 pages and specifications in electronic form exceeding 20 MB in size should be sent to us as physical media, such as CD-ROM, CD-R, DVD or DVD-R and should be in the form of PDF, TIFF or JPEG.