Intellectual Property Filings Overseas: Documents to Notarise

Many patent, trade mark and design filings overseas need no notary at all. Where a foreign IP office does want formalities, the documents are usually a power of attorney for the local agent, an assignment of the right to apply or claim priority, evidence that your company exists, and sworn declarations. The local IP attorney tells you which.

Key takeaways

• Every IP office sets its own formalities. The same filing can need nothing in one country and a notarised, legalised power in the next.
• The local IP attorney or agent is the person to ask. They know what their office accepts.
• A priority document is a certified copy issued by IP Australia, not a notarised copy.
• Company-signed documents, such as a power of attorney or assignment, are what a notary usually handles.
• The notary attests who signed and on what authority. Whether the rights are valid or owned is for an IP attorney.
• Some offices let you file a power or assignment after the application. Ask before you delay the filing for paperwork.

Do you need a notary to file IP overseas?

Often not. A large share of foreign filings are handled by a local IP attorney on your instructions, using forms that you sign, or that the attorney signs for you, with no notary involved. Offices vary widely. Some accept a scanned power of attorney. Some want a signed original. Some want the power notarised, and a smaller group want it notarised and then apostilled or legalised at their embassy. A few also want evidence that the applicant company exists, formalised in the same way.

Because the rules are set office by office and change from time to time, the most reliable source is the attorney who will file for you in that country. Your Australian patent or trade mark attorney usually coordinates this across several countries and can collect the answers for you. Where a notary is needed, it is almost always for a document your company signs, not for the application itself. This page covers new filings and the evidence that follows them; our guide to documents for transferring IP covers assignments of existing rights.

Which documents might a foreign IP office ask for?

The table sets out the documents that most often come up, who issues each, and where a notary fits. It is a guide to the questions to ask, not a statement of any particular office's rules.

Document	Who issues or signs it	Notary needed?	Apostille or legalisation?
Power of attorney for the local agent	Your company's officers	Depends on the office; often not	Only where the office asks
Priority document	IP Australia, as a certified copy	No; it is a government document	Occasionally; ask DFAT about the original
Assignment of the right to apply or claim priority	Inventors, employees or a related company	Sometimes	Sometimes
Evidence the company exists	ASIC, as a company extract	A notarised copy, if the office wants one	Sometimes
Declaration of use or other evidence	A director or employee, sworn	Often sworn before a notary	Where the office asks
Translation of the specification or mark	The local attorney's translators	No	No

What about the power of attorney for the local agent?

This is the document a notary sees most often in IP work. Most foreign offices require an applicant from outside the country to act through a local attorney or agent, and many want a document appointing them. The local attorney normally sends their own form. Use it: it is drafted to the office's rules, often bilingual, and a home-made version is a common cause of formality objections.

Two practical points save repeated appointments. First, ask whether the office accepts a general power that covers all your company's filings in that country, rather than one per application. If so, one notarised power can be kept on file and referred to for years. Second, ask whether the power can be filed after the application. Many offices allow a late-filed power within a set period, so the application can go in on time and the notarised power can follow. That matters most when a priority deadline is close.

For an Australian company, the power is signed by its authorised officers, and the notary will want evidence of their authority, usually a current ASIC extract and sometimes a board resolution. Our guide to notarising a power of attorney explains the appointment itself.

Is a priority document the same as a notarised copy?

No, and confusing the two wastes time. When you file overseas claiming the date of your earlier Australian application, the foreign office may want a certified copy of that application, called a priority document. It is issued by IP Australia, the government office that holds the application. A notary cannot produce one, because a notary certifies that a copy matches an original in front of them, not that it matches IP Australia's records.

In many cases no paper is needed at all. IP Australia takes part in the World Intellectual Property Organization's Digital Access Service, which lets participating offices retrieve priority documents electronically, so your attorney may only need to give the foreign office an access code. Where an office still wants paper, IP Australia issues the certified copy. If an office also wants that copy legalised, it is an Australian government document, and DFAT's page on documents it can legalise says it deals with original government documents. Confirm with DFAT before paying a notary for a step that may not be needed.

What about assignments and declarations?

Some filings need evidence that the applicant is entitled to apply. If your company files overseas based on an Australian application made in the names of the inventors, or by a related company, the foreign office may want an assignment of the right to apply, or of the right to claim priority, from them to your company. The IP attorney drafts it. Where the office wants it notarised, each person assigning signs before a notary with photo identification, and a company signs through its officers.

Later in the life of a trade mark, some offices ask for evidence: that the mark is in use, that it has become well known, or that it was used before a rival's filing. That evidence is often given as a sworn statement by a director or manager, with exhibits such as invoices, catalogues and photographs. For a foreign office, the statement is usually sworn or affirmed before a notary, and the exhibits are identified in the notary's certificate. Our guide to swearing an affidavit explains how that works, and a statutory declaration versus an affidavit explains why an Australian statutory declaration may not be the right form for a foreign office.

Does the company have to prove it exists?

Some offices want evidence that the applicant is a real company, particularly when the applicant is new to that country or a power of attorney is being filed for the first time. For an Australian company, the usual evidence is an ASIC company extract. Australia does not issue the "certificate of good standing" that some foreign forms mention; the ASIC extract, or a notarial certificate describing the company's status from ASIC's records, normally does that job. Our guide to certifying company records for a foreign registry explains the options. If the office wants a certified copy of the extract, have a notary certify it: a copy certified by a Justice of the Peace is meant for Australian use and cannot be apostilled.

Does it need an apostille or legalisation?

Only if the receiving body asks. When it does, the notarised document goes to DFAT, the only body in Australia that legalises documents. For a country that is a party to the Hague Apostille Convention, DFAT issues an apostille confirming the notary's signature and seal. For a country that is not, DFAT issues an authentication certificate and that country's embassy or consulate in Australia then legalises it. Check the HCCH status table on the day, as membership changes. Embassy legalisation adds a step, so start that country's paperwork first.

How do you prepare, step by step?

1. List the countries and deadlines. Your Australian IP attorney will have the priority deadline for each filing.
2. Ask each local attorney for their formalities. Which documents, in what form, whether notarised or legalised, and whether any can be filed late.
3. Use their forms. Have powers and assignments drafted by the attorneys, not adapted from another country's template.
4. Collect authority evidence. A current ASIC extract and, where needed, a board resolution naming the signatories.
5. Sign every counterpart at one appointment. One original per office that keeps originals, plus a spare if an answer was uncertain.
6. Send to DFAT where asked. Then to the embassy for countries outside the Hague Convention.
7. Record what was filed where. A general power on file in one country saves a notary visit next time.

Common mistakes to avoid

The most common mistake is asking a notary to certify a copy of the Australian application as a priority document; the foreign office wants IP Australia's certified copy or a digital access code. The second is holding back a filing until a notarised power is ready, when the office would have accepted the power later. The third is a signatory whose name or title does not match the ASIC extract, which foreign offices notice. The fourth is signing one original when three offices each want to keep one. Our guide to documents for entering a new export market covers trade mark filing as part of wider market set-up.

Here is an illustration, not a real case.

A Brisbane equipment maker files an Australian patent application and, before the priority deadline, instructs its patent attorney to file in several countries. Two local attorneys need nothing signed. A third sends a bilingual general power of attorney and says it may be filed after the application. The company's two directors sign it before a notary with a current ASIC extract, DFAT apostilles it, and the attorney lodges it within the office's period. The priority document is retrieved through the digital access service, with no paper copy at all.

In short

Many overseas IP filings need no notary. Where an office wants formalities, they usually apply to documents your company signs, such as a power for the local agent or an assignment, and to sworn declarations. Priority documents come from IP Australia, not a notary. Ask each local attorney what their office needs, use their forms, and never let the paperwork hold up a filing deadline. Our document notarisation page explains how company documents are notarised.

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Asked for a notarised power or declaration for a foreign IP office? Send us the attorney's form and instructions, and we will explain each step before you book.