In my experience, it is the jurisdiction, amongst the important jurisdictions, that presents the greatest difficulty in securing patent rights of an appropriate scope.
2. How does the Australia–EU Free Trade Agreement influence patent strategy for Australian applicants with European interests?
The FTA should be a trade enhancer. As such, Europe should increase in importance as a patent filing jurisdiction.
Novelty standards are quite different.
Inventive step standards are quite different.
Claim amendment is quite constrained in Europe because of the possibility that an amendment might be found to be added subject matter.
The specification and claims have been drafted with a strong Australian-US emphasis. See further below.
5. How do differences in legal requirements affect how applications should be drafted from the outset?
Because the EPO is focussed on identifying or creating the problem to be solved by the invention, applicants should ensure that initial drafting is similarly focussed.
- No clear statement of problem to be solved and no clear disclosure of the technical solution. Nor are there back up problems or solutions clearly disclosed, which may be needed if new prior art requires claim amendment.
- Priority claim based on an Australian provisional patent application is invalid as the provisional patent application is insufficient. Loss of priority.
- Priority application not validly assigned to the EPO applicant. Loss of priority.
- Europe does not have a 1 year grace period unlike Australia and the US.
The respective inventive step tests are fundamentally different.
The EPO has a highly structured approach that usually allows for a much broader range of prior art and general knowledge to be considered.
Australia has a somewhat narrow range of prior art which may only be considered with common general knowledge.
The manner in which the prior art is considered is also quite different.
In the EPO a problem/solution approach is used. The closest prior art to the purported inventive solution to the problem is identified. Then is the solution provided obvious over that prior art alone or in combination with other prior art or general knowledge.
In Australia, the question is whether a notional skilled person, aware of all relevant prior art and the facts about existing solutions, would have been directly led as a matter of course to try the claimed invention in the reasonable expectation that it might produce a useful or improved result. If yes, the invention is obvious.
By contrast, sufficiency seems to be broadly aligned with Australia approaching consistency with Europe.
A pan-European court in which parties may enforce and/or invalidate patent rights. It is not applicable in all European states as some countries have not acceded. It was established to allow a single court action, the results of which would apply to all European states that had acceded.
Primarily infringement and invalidity actions are easier and will be lower in cost because they will have wide European state reach. Previously, infringement actions had to be taken on a state-by-state basis.
No. They are separate bodies with generally the EPO opposition procedure being available earlier and at lower cost to an Opponent. Although recently the UPC completely invalidated the patent for treatment of Covid using remdesivir whilst the same patent is under opposition before the EPO.
11. What practical advice would you give Australian practitioners looking to better align their strategy with European requirements?- Draft an Australian provisional application that is consistent with European standards.
- Ensure that the applicant has a written assignment of inventors rights and third parties (if appropriate).
- At the PCT stage, obtain a EPO search to gain a better insight into the prior art to be faced in European prosecution.
Paul explores these issues further in the workshop An Australian Perspective on European Patent Practice. on Thursday, 4 June 2026
In this session you will focus on the following critical areas:
- Effect of the free trade agreement
- Understanding the fundamental differences
- Comparing key legal requirements
- Traps for Australian applicants
- The Unified Patent Court
Paul Whenman, Consulting Partner, FB Rice
