Mann IP | Patent and Trade Mark Attorneys

What is a patent?

A patent provides an exclusive right to exploit an invention commercially for a period of time. Patentable inventions can include mechanical apparatuses, electronic devices, substances, processes for making things, methods for doing things and software-related systems.

There are two types of patents in Australia: standard patents and innovation patents.

Standard patents

Standard patents normally provide up to 20 years of protection.

To obtain a standard patent, your invention must be useful and ‘new’. To be new, the invention must not have been disclosed, either through use or publication, anywhere in the world before a patent application for the invention is first filed. Secret use can also cause your invention to lack novelty (e.g., covertly using a method/process for commercial gain).

Your invention must also involve an ‘inventive step’. This means that the differences between what you have created and what has been done before must not be obvious to a skilled person in the relevant technical field.

Innovation patents

Innovation patents normally provide up to 8 years of protection.

To obtain an innovation patent, the invention must also be useful and new. However, the invention does not need to involve an inventive step. Instead, the differences between what you have created and what has been done before only need to affect the way your invention works in a material way.

Please be aware that the Australian Government has recently announced that they will soon be seeking to phase out innovation patents. Innovation patents are, however, currently part of the Australian patent system and may be validly applied for.

Application procedure

Searches

Before filing a patent application, it is important to carry out a thorough search for any existing published patent information relevant to your invention. Searches can help you obtain an indicative view of the novelty of your invention and whether there are any existing granted or pending patents that could stop you from exploiting your invention commercially.

Provisional stage

The normal next step is to file a provisional patent application. This gives your invention a ‘priority date’ (the date at which its validity will subsequently be tested). It also buys you an initial 12 month period during which you may publicize your invention to test its commercial viability without affecting your subsequent ability to obtain patent protection. The provisional application is not published so you may keep your invention hidden from competitors during this period if you want to.

Complete stage

A ‘complete’ patent application must then be filed, based on the provisional application, in each country where protection is required before the end of the initial 12 month period. If you have made any improvements to your invention, then it is possible to incorporate these into each complete application.

Once filed, a complete application must be examined by the relevant national patent office to ensure that it complies with the applicable legislative requirements. In some countries (e.g., the US) examination is automatic but in others (e.g., Australia) it only occurs if it is requested by the applicant or by the patent office. During the examination process, the patent office reports any issues identified with the application and gives you an opportunity to try to overcome them.

If the application passes the examination stage successfully, third parties are then given a period of time to oppose the grant of your patent should they believe that grounds exist for doing so. After the opposition period has expired (or after any oppositions filed have been overcome) the application proceeds to grant and then becomes enforceable.

International applications

If you are seeking patent protection in several countries, instead of filing individual national applications at the complete stage it may be more cost effective to file an international (PCT) patent application. The PCT process allows you to file an application in a single language and country (including in Australia) seeking patent protection in over 150 countries simultaneously.

The PCT process is divided into two stages: the international phase and the national phase. During the international phase, the patent office examines your application and reports any issues that may affect your ability to obtain protection for your invention. You are then given an opportunity to try to resolve these issues. During the national phase, individual patent applications must be filed in each country or region where you are seeking protection.

You may incorporate any modifications made to your application during the international phase into each national phase application. The PCT process, therefore, helps you gauge your chances of success for obtaining patent protection, and allows you to get your application in a better form, before incurring the expenses associated with pursuing protection in each individual country or region.

Case study

The Australian Patent Office (IP Australia) has published the following video on YouTube which provides an informative case study about patents