A patent is a legal document which confers on an inventor or a person claiming rights from the inventor a monopoly for a limited time to make, use, hire or sell an invention. In return for this monopoly, the inventor or applicant must disclose the invention to the public for the benefit of advancing technology. This is done by way of a patent specification, which is a written description of the invention.
Any new and inventive device, substance or process which is commercially useful can be patented. Examples include mechanical devices, electrical circuits, computer technology, business methods, advanced materials, chemical compounds, pharmaceuticals, micro-organisms, plants, genetically altered non-human life forms and processes for their manufacture.
The invention must be new at the date of filing a patent application. This means that there should be no disclosure of the invention before a patent application is filed, unless it is under an obligation of confidentiality. Disclosure may occur when there has been an oral presentation, printed publication, offer for sale or public use of the invention. Some countries, including Australia, have a grace period that may cover disclaimers made by an inventor. However, we do not recommend relying on the grace period as other jurisdictions, such as Europe, do not have comparable conditions.
A search can be conducted in order to check that an invention is new and/or does not conflict with or infringe any existing patent rights. Searching is generally recommended before substantial expenditure is contemplated, that is, overseas patent protection or development or marketing of the invention.
It is important to realise that searching can never be conclusive, and merely reduces the degree of uncertainty. Professionally-conducted searches may range from a relatively inexpensive search conducted on a computer database, to a comprehensive manual search of the patent and scientific literature. For further information about the cost of professionally-conducted searches, please contact us.
Free (but limited) searches can also be conducted at a number of sites available on the internet (more information is available on our ‘Research your Idea’ page).
In Australia there are two types of patents—standard and innovation. Standard patents are preferred as their term is 20 years as opposed to a maximum term of eight years for an innovation patent. Innovation patents are recommended for products which are not highly technical and/or have a projected short market life.
File a patent application
Patents are granted on applications filed at the Australian Industrial Property Office (Patent Office). The patent specification forms the major part of the application.
Provisional specification
Patent applications originating in Australia are usually accompanied by a provisional specification, which provides a description of the invention so as to establish a priority date. The cost of preparing and filing a provisional patent specification by an attorney varies, depending on the technology and the complexity of the invention.
After the provisional application has been filed, the invention may be disclosed to others and its commercial worth tested. However, in some circumstances it may be desirable to delay disclosure until after a complete patent specification is filed and/or foreign patent protection is sought.
The provisional application remains in effect for 12 months. A complete specification must be filed before the expiration of the 12 month provisional period. Alternatively, filing the provisional specification can be omitted and the application can be accompanied by a complete specification in the first instance.
Complete specification
A complete specification must fully describe the invention and end with claims which define the invention in precise terms. The claims constitute the legally binding portion of the patent specification, as they determine the scope of protection sought and distinguish the invention from known technology.
Publication
Usually, the complete specification is published by the Patent Office 18 months after filing of the provisional specification. If no provisional specification has been filed, then the specification is usually published 18 months after filing of the complete specification.
Examination
A direction to request examination will be issued from the Patent Office about 18 months after the complete specification is filed.
An examiner will then review the complete specification and conduct a search to check whether the invention is new. An opportunity is provided to overcome any objections raised by the examiner by argument and/or amendment of the specification.
Acceptance and grant
When the examiner is satisfied that the applicant is entitled to a patent, the application is accepted. Other parties can intervene at this stage by opposing the grant of the patent. If no opposition is filed or an opposition is resolved in favour of the applicant, then a patent is granted and the Deed of Letters Patent issued.
Annual fees
Annual maintenance or renewal fees must be paid to the Patent Office from five years after the complete specification is filed, otherwise the application or the patent will lapse. These fees progressively increase over the 20 year term.
This type of patent is a simple and inexpensive alternative to the standard patent. It is useful where the invention is not sufficiently inventive to meet the inventiveness requirements for standard patents. It has replaced the petty patent and is attractive where rapid grant is desired, for example, due to the invention having a projected short market life. The innovation patent is granted without examination, however, it cannot be enforced until after examination has been requested and carried out and the innovation patent is certified. Innovation patents provide a useful tool for enforcement.
Most countries are members of an international convention which allows overseas patent applications to claim the benefit of the filing date of an Australian patent application, provided they are filed within 12 months of the Australian application.
It may still be possible to file overseas patent applications after the 12 month date without claiming the benefit of the Australian filing date, provided there has been no disclosure of the invention.
There are two procedures available for obtaining overseas patent protection:
Separate overseas patent applications
This involves filing separate applications in each individual country of interest. Europe may be protected by a single European patent application which potentially covers over 30 countries. Each separate application is then subject to a procedure which is similar to that described above for an Australian patent application.
International (PCT) patent application
An international or Patent Cooperation Treaty (PCT) application can be filed which allows for the designation of over 135 countries from a list including most industrialised nations.
The international application must later be converted into separate national applications in the individual countries or regions at an additional cost. The additional cost is similar to that which would be incurred in the separate applications process described in the paragraph above, but will not be incurred until up to two and a half years from the filing date of the initial Australian application. This enables the high costs of filing separate applications to be deferred.
International search and preliminary examination reports will also issue within this time, which will assist in deciding whether it is worthwhile converting the international application into separate national applications.
A patent grants to the patentee a monopoly to exploit the invention in the country or countries in which protection has been obtained for a limited period of time (20 years in most countries including Australia, subject to the payment of maintenance or renewal fees).
The patent is a right of property which means that, like other items of property, it can be assigned or licensed to others in return for a royalty payment to the patentee. The patentee may also obtain legal relief to stop others using the invention without permission.
A patent attorney has qualifications in both a technical field, such as a degree in science or engineering, and also in the field of intellectual property, which includes such things as patents, trade marks, designs and plant breeders rights.
The role of the patent attorney is to act as the professional intermediary between technology and the law. A patent attorney consults with the inventor about his invention, provides advice on the various options for intellectual property protection, prepares a description of the invention and then represents the inventor in their dealings with the Patent Office.
If you need help with your patent registration, then please contact us for further assistance.
