A patent or a patent application is intellectual property (IP). Similar to other forms of property, IP has value which can be sold or licensed to others.
What is a patent?
A patent is a monopoly for an invention, effective within the country, for a maximum period of 20 years for a standard patent and 8 years for an innovation patent.
Having a patent means you have exclusive rights to make or sell your patented invention within the country. This means a competitor cannot have a copy product made overseas and then import it into the country.
A patent or a patent application is intellectual property (IP). Similar to other forms of property, IP has value which can be sold or licensed to others. You may have heard for example of big companies such as Google acquiring other companies primarily for their IP portfolio (families of patents).
Patents are provided by the government as encouragement to promote innovation, as innovators know that they can get monopoly protection for a specified period for their investment in developing their innovative ideas.
Patents are also provided as a teaching tool, in that complete patent specifications describing the invention are published after 18 months. This allows others to learn from your innovation. When the patent expires, the knowledge becomes free for all to use.
How do I get a worldwide patent? Is the patent international?
No. There is no such thing as an international patent or a worldwide patent. Patents, for the most part are on a country by country basis. There are some exceptions, like two regional patents in Africa, a Eurasian patent (Russia, Kazakhstan, etc) and the most commercially relevant to a majority of clients, a European patent.
What is a European Patent (EP): A European patent application covers (currently) 38 countries/territories in Europe and is filed and examined as a single application. However, when the patent is granted, you have to pay the Validation fees in the countries where you want the European patent to have effect in.
What is an International (PCT) application? This is an international application, however it still does not get granted as an international patent. The main function of a PCT application is it provides you with an additional 18 month option within which to file the individual country applications. See the explanation of PCT applications or give us a call to discuss this with you.
How do I protect my idea around the world? In theory, it is possible to obtain a patent in most countries of the world. Obviously however, costs would be the major factor and you have to consider this in light of your likely market in each country.
The more cost effective option is to pick the major countries where you will commercialise the idea. In most cases, these countries include Australia, New Zealand, USA, Europe, China and Japan. This allows you to cost effectively protect your key markets.
How effective is a patent?
In our experience, patents and even patent applications are very effective in protecting your idea, primarily through deterring competitors from copying your idea.
What does a patent cover? Does a patent cover products imported from overseas (China)? China is a major manufacturing country and many clients are concerned that ideas they develop and commercialise can be easily copied in China and then imported into Australia. A patent in Australia not only covers manufacture and selling of your product in Australia, it also covers any importation of an overseas made product into Australia.
PATENT PENDING: If a product is marked “PATENT PENDING”, it makes no business sense for your competition or other copier to invest large sums of money copying your idea or importing a similar product into Australia, knowing that there is a patent or a patent may be granted and they may be told to stop.
Getting a headstart on your competition: What this effectively means is you can get a big headstart on your competition, even if the patent is still in the ‘PATENT PENDING’ application stage. We have seen this first hand at work.
“Some people don’t care if there is a patent on the product!” Trust us, they do. People come to us all the time when they want us to check whether there is a patent on a product before they manufacture or import the product. This is the patent being effective, and in most cases, the patentee does not know the patent is working for them in the background.
Patent Infringement assessment: Clients also come to us when they receive notification of a patent which they may be infringing. We can then assess the patent to see if they are in fact infringing or not. If they are, we assist the client in reaching a settlement with the patentee. Again, this is the patent being effective without having to enforce the patent in court. Most people are sensible and they do not want any legal or patent infringement issues hanging over their head.
Purpose or Function of a Patent: What we found from experience is that the main function of a patent or patent application is not to obtain a patent so you can sue copiers or enforce the patent against copiers. Infringement is rare in Australia. Having a patent or patent application is typically enough to deter copiers.
How do I get a patent?
1. Keep it confidential.
Do not tell anyone, sell or publish your product or idea until a patent application is filed.
If you have disclosed (shown) the idea, contact us. You still have options. Importantly, Australia and the USA provide a 12 month grace period where you can still file a valid patent application.
2. Call or email us.
We can discuss your idea, its merits, and your patent application strategy options and the associated fixed costs from start to finish. The strategy in most cases depends on your commercialization plans as well as your budget.
Can I file a patent myself?
Patent specification as filed: One of the main legal concepts in patent law in Australia and around the world relates to the patent specification as filed. A patent specification is more than a simple description of your invention. It is a complex legal document which describes the scope of the patent monopoly being claimed in patent claims. The patent specification must also comply with other requirements such as sufficiency of disclosure, fair basis or support for the claims, clarity of the claims and the description, correct claim structure and antecedence.
Self-filing a patent application: Inventors who ‘self-filed’ their applications often come to us for assistance. Given the substantial number of requirements for patent specifications, it is often that ‘self-filed’ patent applications do not comply with many of these requirements.
We have seen this situation many times and the problems it causes. One issue is the Patent Office will accept the patent specification you submit and your fees, and as your specification will not be examined at that time, they are not in a position to tell you if there are any possible issues with your patent specification.
It is not until your application goes through examination (about 5 years down the track) that the patent examiner will typically issue a 5 page report telling you the defects of your patent specification. To give you an idea, the patent examiner has a 20 point heading checklist to consider, with each heading point having further detailed points for consideration.
A patent specification is a legal document which will get scrutinized during examination and possible enforcement. It has many requirements which were even more increased with the recent Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
What happens if I file my own patent application? When a ‘self-filed’ patent application receives an examination report, this is when the inventor or patent applicant usually comes to us for assistance. Two major issues always come up:
(1) The patent protection we can get at that stage is very limited, as we can only claim material disclosed in the specification as filed. If material was not there when filed, the material cannot be added. If the broad claim language was not there when filed, it also cannot be added.
(2) The costs in redrafting the patent specification at that stage and responding to the examination report is similar to or more than what the self-filer would have spent had they gotten a professional patent attorney to draft the initial patent specification.
Examples of self-filed patent applications and their consequences:
(a) A bulk container manufacturer came to us about filing applications in a number of countries overseas. They filed their own provisional patent application and their International PCT application. Now 2 years down the track, business is going great in a number of overseas countries. However, because their patent specifications were not drafted properly, they were not able to obtain patents in Europe, USA and China, and were only able to obtain limited scope patent protection in Australia.
(b) A prolific local inventor who had a green technology idea filed his own Innovation Patent application and got an innovation patent. The innovation patent does not have patent claims. Three years later, he was able to get substantial investment funding to build a prototype and commercialise the invention. We drafted a new patent specification and filed a new provisional patent application which covers his technology and some improvements – but there will now be limitations as to the scope of patent protection that can be obtained in light of the publication of the innovation patent.
In summary, filing your own patent application would most likely be equivalent to ‘shooting yourself in the foot’ and it will cost you about the same or more down the track.
I highly recommend you work with a professional patent attorney that you trust.
How long does it take to get a granted patent?
About 5 to 6 years from your first application date. The usual response we get is “that long?” Yes, primarily because of the substantial number of applications awaiting examination at the Patent Office.
You use this ‘delay’ to your advantage. Firstly, in most cases (where you are not infringing someone else’s patent), you can start commercializing your idea immediately after you file your first application, usually a provisional application. You can mark your products ‘PATENT PENDING’ all that time while the application is still pending.
The delay also provides a number of additional benefits including:
(1) deferring costs as much as possible, spacing out costs over a longer period whilst you commercialise your invention with PATENT PENDING;
(2) flexibility in amending the scope of your pending patent claims to direct them to a possible infringer; and
(3) commercially, placing doubt in your competitor’s mind as to the scope of patent protection you will obtain.
As discussed here – HOW EFFECTIVE IS A PATENT?, a pending patent application provides an effective deterrent against copiers.
Enforcing a patent application: A pending patent application cannot be enforced against a potential infringer. To enforce any patent rights, a patentee must have a granted standard patent or a certified innovation patent. Sending threats to a potential infringer based only on a pending patent application is against the law.
Expediting examination: If you have a patent application pending, and you recognize a potential infringer, give us a call. There are strategies and steps we can take to obtain an enforceable patent as quickly as possible which we can then enforce against the copier.
What is a patent specification?
A patent application consists of two parts, the application form and the patent specification. The patent specification is a description of your invention and has a number of parts, including a background of the invention, a summary portion, a description of your drawings, a detailed description of your invention and a set of numbered patent claims defining the scope of the invention being claimed.
Patent specifications are legal documents which have a substantial number of requirements and will get scrutinised during examination and if the patent is enforced.
We highly recommend you obtain a patent attorney to prepare your patent specification.
Does the provisional application include a novelty search?
No. The main reason for this is searching is a very difficult task for the reasons explained below. We can do a novelty search for you as a separate process for an agreed fixed searching cost.
Why is patent searching difficult?
One of the main requirements for getting a patent is that the claimed invention must be new (novel) in light of any “prior art” – any use, publication or disclosure anywhere in the world before your earliest application filing date (also called your priority date).
If you think about it, this is a huge requirement as publication or disclosure includes anything considered in the public domain, including products, websites, patent publications, magazines, product brochures or oral disclosure of the idea, even your own prior publication or use, anywhere in the world, in any language. It is impossible to search every single such publication or disclosure.
How is patent novelty assessed?
This onerous novelty requirement leads to the following:
(1) Under section 7 of the Patents Act, when your invention gets assessed for newness (novelty) and inventive step, it is assumed that your invention is novel and inventive in light of the prior art, unless the patent office can show (by citing a publication) that it is not. If they cannot, your invention is deemed patentable.
(2) Under section 20 of the Patents Act, the validity of any patent is never guaranteed by the Patents Act. This is to cover the possibility that they were unable to locate a possibly relevant document. Does this mean the validity of a patent is always questionable? Not at all. Most patents are never challenged and provide the deterrent effect against competitors. In practice, it is quite rare for any patent to be revoked after passing examination and being granted, as any newly found document (if any) will usually not disclose all of the features of the invention as claimed. In some rare cases, a patent may have to be narrowed in light of the new document. In our experience however, this happens many years down the track after providing the patentee with a big headstart on the competition.
Can I do a novelty search myself?
We recommend you perform at least some basic novelty searching yourself. The following website, Google Patents, is probably the easiest to do patent publication searches on, in addition to general searching on the internet.
Once you start doing some patent searching, you will get a feel as to why we say searching is difficult. There are literally millions of publications and the results depend on the keywords you use.
What if my idea is not new? If you find something similar to your idea, DON’T PANIC! Give us a call. The general idea may be the same, but your specific implementation of the idea may be commercially valuable.
For example, there are about 20 different types of vacuum cleaners in the stores, ranging from $100 to $950. These products all perform exactly the same task (suck the dirt off the floor) but each is different by a new feature – such as a different tube, vacuum head, suction mechanism, or dust collection means – which is their selling point and which they likely have a patent for. As we know, these products do not all perform equally and some are better to use than others.
If you require more thorough searching, give us a call.
What details of my idea do I need to provide?
What details of my Idea do I need to provide?
For a patent application, we need the following.
a) Your details (full name, street address, contact phone number and email).
b) What problem are you addressing? (short description only, 10 lines max)
c) How does your invention work?
d) Drawings (can be rough sketches) or photos
e) List of the features and benefits of your invention.
Send the above to us by email to email@example.com and we will call you to discuss your invention, the application process and the costs.
From your idea details, we will then prepare a patent specification that looks like this.
What is the patent application process?
The typical steps in applying for and obtaining a patent is described below. It is important to note there are substantial periods between these steps. This works favourably in your advantage as you space out your costs over a considerable period. If required however, we can expedite the process to obtain a granted patent as soon as possible.
1. (Optional) Pre-filing search
If your budget permits, a professional pre-filing search is recommended to locate publications relevant to the patentability of your invention. This will provide an indication of the likelihood of obtaining patent protection and the potential scope of protection. Often, our clients have been involved in their industry for decades and so they have a ‘feel’ for whether their idea is new or not. Clients in these situations may forgo the pre-filing search and choose to instead focus on filing a patent application so they can start commercialising the idea.
2. Provisional patent application
We recommend starting the patent process by filing an Australian provisional patent application (often referred to as a ‘provisional’ or ‘prov’).
Some refer to this in error as a ‘provisional patent’. The terminology is important, and it is important to note that a provisional patent application is just that, it is still an application and no patent rights are granted yet which can be enforced or used to threaten a potential copier.
Is the provisional application examined? No. The provisional application literally sits at the patent office unexamined and unpublished.
What does a provisional application provide?
(a) Priority date: The filing date of the provisional application provides you with your ‘earliest filing date’ which is formally referred to as your ‘priority date’. When determining whether your invention is patentable (new and inventive), the ‘prior art’ for your application will be all publications or disclosures available to the public before your priority date. Publications or disclosure after your priority date cannot be used against your patent application to show lack of novelty. This includes your own disclosure of the invention after your priority date, such as commercialising your invention.
(b) ‘PATENT PENDING’: In the vast majority of cases (where you are not infringing someone else’s patent), you can start commercializing your idea immediately after you file your provisional application. You can mark your products ‘PATENT PENDING’ to indicate to others that there is a patent application in place in relation to your product. Having this marking on your product in most cases is an effective deterrent against potential copiers. Many of our clients have generated revenue after filing the provisional application and used part of that revenue to fund the rest of the patent prosecution costs.
(c) 12 month priority claim: The provisional patent application has a life of 12 months. Although it is only a single application in Australia, it effectively functions as an international claim to the invention, depending on which countries you file complete/national applications later on. This is explained further in item 4 below.
(d) Unpublished: The provisional patent specification (the description of your invention) will not be published, unless you later on file an associated complete patent application or international PCT patent application. The only details that will be published in relation to your application are the filing details – name of applicant, inventors, title of the application, filing date and application number. This keeps your competition guessing as to what invention you applied for.
(e) Further Developments/Improvements to the Idea: This is the main advantage of filing a provisional patent application first compared to filing the initial application as a complete application or a PCT application. In many cases, after filing the provisional application, the applicant comes up with modifications, additional features or embodiments of the invention. There is then the option of filing one or more additional provisional applications to cover these additional features or the additional features can be added to the complete or PCT application when those are prepared and filed. In contrast, if the initial application was filed as a complete application or a PCT application, the applicant would have to file a separate new application and pursue that new application line independently from the initial application and thus double the prosecution (processing) costs.
(f) Intellectual Property (IP): The provisional application is IP property which has a value, which the owner/applicant can commercialise, either by selling the IP rights outright, licensing the IP rights or use it as a tool for negotiating joint venture agreements. In some cases, it can also be used as collateral.
(g) Additional year: The provisional application, with the ‘Patent Pending’ status it provides, effectively adds one more year of protection to the term of a patent, whether a standard or an innovation patent.
We include a full set of patent claims in our provisional patent specifications. This provides coverage and basis for claiming broader scope claims down the track. Also, you will save on complete or PCT patent specification costs.
3. (Optional) International-Type Search
As an alternative to the pre-filing search (item 1 above), optionally, the applicant can request an International-Type Search (ITS) which is performed by the Australian Patent Office based on the filed provisional application. If you are considering pursuing protection in multiple countries overseas, we recommend an International-Type Search or a professional pre-filing search be requested after filing the provisional application.
4. Complete application(s) or PCT application
Within the 12 month life period of the provisional application, you must file either:
(a) A complete patent application in the countries where you want to pursue patent protection; or
(b) An International Patent Cooperation Treaty (PCT) patent application. This is an international application but it does not get granted as an international patent. Mostly, the function of a PCT application is to extend the 12 month period for filing the complete applications (step (a)) by an additional 18 months (19 months for some countries).
Described below is the procedure for step (a): filing a direct complete patent application in the countries of interest. The procedure for a PCT application is explained at “INTERNATIONAL PCT PATENT APPLICATION”.
Australia: A complete patent application in Australia can be for Standard patent application or an Innovation patent application. Described below is the procedure for a standard patent application. The procedure for an innovation patent application is explained at “INNOVATION PATENTS”.
Overseas Applications: Complete applications filed overseas (for example, in China and the USA) within the 12 month period of your provisional application will be entitled to claim the priority date of your provisional application. Essentially, your China and USA patent applications will get ‘dated back’ to the filing date of your provisional application and that is the date that the Chinese Patent Office and the US Patent Office will eventually use when examining your invention for patentability (newness and inventive step). This is what is meant by your provisional application providing a 12 month international claim to your invention.
Publication: Standard and PCT patent applications are published after 18 months from the priority date. This means all of the information in the patent specification will become available to the public, including the specification of the provisional application.
5. Examination of your patent application
Between 2 to 4 years after filing your complete application, your patent application will be examined by the patent offices in the respective countries (Australian, Chinese and USA Patent Office in the example above) for patentability according to local laws.
In Australia, around 55 months from your priority date, the Australian patent office will issue a Direction to Request Examination which will require the patent applicant to request examination and pay the examination fee within 2 months from the date of direction.
Prior Art Search: During examination, the patent office will conduct a search of the prior art, which usually includes earlier published patent publications. It is also usual for some patent offices to rely on search results from any of your other corresponding applications in other jurisdictions.
What is examined: There are some variations in requirements for patent applications depending on the country. The two key requirements for patentability of novelty (newness) and inventive step (obviousness) is common in most countries of the world, although the interpretation of these can vary. The patent examiner will make an assessment as to whether your invention is novel and includes an inventive step in view of any prior art considered relevant.
The patent examiner will also assess whether your patent specification complies with other requirements such as sufficiency of disclosure, fair basis or support for the claims, clarity of the claims and the description, correct claim structure and antecedence, as well as others.
There are many requirements for a patent specification which an experienced patent attorney can handle for you. These requirements again emphasise the reason why you should not file your own patent application.
Novelty (newness): Novelty requires that your invention as claimed in the patent application includes at least one new feature or a new combination of features which is not shown in the prior art.
– your broadest claim describes an apparatus with features A, B, C, and D;
– the closest prior art X only shows a combination of features A, B and C
Your invention is considered novel.
Novelty is essentially an objective assessment, either an invention is novel or it is not. In the example above, the is no assessment as to the merits of adding feature D.
Inventive step: Inventive step is a requirement that the claimed invention must have a feature or a new combination of features which is considered to be non-obvious to a person skilled in the relevant field of art or technology (referred to as the ‘PSA’).
The PSA can make an assessment as to inventive step based on the Common General Knowledge (CGK) in that field, by itself, or together with one or more prior art documents which may be combined.
In the example above, the assessment would be: “Would it have been obvious to a PSA to add feature D to the invention shown in prior art X which shows features A, B and C?
Inventive step is a subjective assessment, and can differ between different persons skilled in the relevant art.
Examination Report: About 12 to 16 months after requesting examination, it is usual for an examiner to raise objections regarding lack of novelty and an inventive step in an examination report. Just because the patent office has a negative opinion about your invention does not mean they are correct.
The examiner may also raise other minor objections based on the other requirements described above. The most relevant objections however typically relate to novelty and inventive step.
Response: Such objections in the examination report can be overcome by submitting arguments against the examiner’s assessment, together with amendments to the patent claims and specification if required. If the response is successful, the application will be accepted.
The acceptance of the application is published in the Official Journal of the patent office. The advertisement of acceptance date is important as it establishes three important deadlines which fall on the same day. Within 3 months of this advertisement date:
(a) You can file one or more divisional applications to claim any additional inventions disclosed in the specification. In some cases, the one idea actually brings about two or more inventions which are described in the patent specification. Each patent application can only be directed to a single invention. Additional inventions can be claimed in a separate divisional patent application which maintains the applicant’s claim to the priority date of the first (called a ‘parent’) application.
(b) The official acceptance fee must be paid. The acceptance fee consists of a base fee for accepted patent claims of 20 or less. Each claim over 20 at acceptance will attract an excess claim fee. It is thus important that only the most relevant claims (preferably 20 or less) are retained to avoid paying excessive claims fees at acceptance.
(c) A third party can file a Notice of Opposition against your patent application. An Opposition is a separate process which suspends the grant of a patent on your application. In an Opposition, the third party (called the ‘Opponent’) will provide evidence to show that your invention is not patentable. Patent Oppositions are not common, they are a very involved process and are filed for about less than 0.4% of patent applications filed.
7. Grant of the Patent
Once the acceptance fee is paid, and if there are no Oppositions filed prior to the 3 month deadline, the patent will be granted.
8. Renewal fees (also called ‘annuities’ or ‘continuation fees’)
Renewal fees must be paid to maintain the patent/patent application in force. In Australia, these are yearly fees which start at the 4th anniversary from the filing date of the complete application (or the filing date of the PCT application).
It is possible for the first renewal fees to be payable while the application is still pending and not yet examined.
Different countries have different rules as to when renewal fees are payable. Some are due earlier, and some are not due until the patent is granted.
The steps outlined above are for a typical patent application in Australia. Patent applications in other jurisdictions follow a similar procedure in relation to examination, acceptance, divisional applications and renewal fees although there are some differences in relation to the respective deadlines.
Innovation patents are only available in Australia. They are considered to be patents for ‘lower tier’ inventions which are usually incremental type improvements over existing ideas.
Are innovation patents weaker? No. Innovation patents are fully enforceable patents and some have been successfully enforced in Australian Courts.
In fact, the innovation patent system and innovation patents in general have provided a handy and usable tool in enforcing patent rights against potential infringers.
How is an innovation patent similar to a standard patent? The strict patent specification requirements for both are essentially the same. We prepare innovation patent specifications in a similar manner to that for standard patent specifications.
How is an innovation patent different? An innovation patent application requires the claimed invention to also be novel, similar to a standard patent application. However, unlike a standard patent application, the inventive step (obviousness test) is removed and replaced with an ‘innovative step’ test.
What is an innovative step? An innovative step requires that the invention makes a ‘substantial contribution to the way the invention works’. In practice, this essentially means you can show that the invention with the new feature provides substantial advantages. In most cases, it is thus easier to show an innovative step rather than an inventive step.
What are the other differences between an innovation patent and a standard patent?
- An innovation patent has a reduced maximum patent term of only 8 years, compared to 20 years for a standard patent.
- An innovation patent when examined can only have a maximum of 5 claims, as opposed to unlimited claims for a standard patent (although excess fees for claims over 20 are required to be paid at acceptance for a standard patent)
- Renewal fees start at the 2nd year anniversary of an innovation patent application, compared to the 4th year anniversary for a standard patent
- The opportunity to file a divisional application from an innovation patent application is very limited when compared to that from a standard patent application.
- The steps in granting an innovation patent is different as explained in the next section.
Innovation patent process
The steps for obtaining an innovation patent are similar to that for a standard patent, but are rearranged and examination is optional.
1. Provisional patent application: An innovation patent can similarly start from a provisional patent application.
2. Compete application for an Innovation patent: This must be filed within 12 months of the filing date of the provisional application. Alternatively, the provisional application step can be omitted and this step taken instead.
3. Formalities examination: After about 2 to 3 months, the innovation patent will go through a formalities examination only, meaning a quick check that the applicant filed what appears to be a patent specification and the correct fee. Once these minor requirements are confirmed, the innovation patent will be granted and published. If there are any formalities issues, the applicant will be provided an opportunity to address them. If your innovation patent specification is prepared by a patent attorney, it is unlikely that any such formalities objections will be raised.
Guaranteed patent: As an innovation patent application is not required to undergo a substantive examination (for novelty and innovative step) before being granted, it is essentially guaranteed that the patent will be granted, and in a relatively rapid manner. However, it is very important to note that the granted innovation patent cannot be enforced at this stage against a potential infringer.
Publication of an Innovation Patent: One of the possible disadvantages of an innovation patent is that patent specification will be published when granted, which happens shortly after filing the application. This can be particularly detrimental for inventors who file their own innovation patent application, as the subject matter of the invention will be published and if the patent specification is not in a proper format, available corrections to the specification will be limited.
At formalities examination, innovation patent specifications are not examined substantively or even if they include claims. There are thus many granted innovation patents with patent specifications that do not comply with the specification requirements. This can lead to a situation where the inventor has disclosed their invention but have not filed a proper patent specification to protect the invention.
Does this mean innovation patents are useless? Not at all. On the contrary, used properly, they are a very powerful, quick and efficient way to enforce patent rights. They provide a powerful patenting and enforcement strategy.
How do I enforce an innovation patent? A request for examination must be filed and the innovation patent must pass the test for novelty and innovative step, as well as the other requirements for patent specifications, in order for the innovation patent to be “certified”. Once certified, the innovation patent can be legally enforced.
Examination is optional: Examination of an innovation patent is optional and does not have to be requested. It is thus possible to have a granted innovation patent, for you to mark your products with the innovation patent number and receive its deterrent effect against copiers, and not have to request examination of the innovation patent throughout its 8 year term if there are no potential infringers of your patent.
Challenging an innovation patent: One option in challenging the validity of an innovation patent is for a third party to request examination of the innovation patent. The third party is required to pay half the examination fee and the patentee must pay the other half of the fee, otherwise the patent will be revoked.
4. Renewal fees: These are annual fees, starting at the second anniversary of the filing date of the complete application, which must be paid to maintain the patent. These are due annually up to the maximum 8 year term.
5. Requesting Examination (OPTIONAL): At any time after grant of the innovation patent, examination can be requested to place the patent into an enforceable state as described above.
6. Examination: If there are objections, an examination report usually issues after 2 to 4 months. The patentee will then be given a period of 6 months to overcome the objections.
8. Certification: If the patent passes examination, a Certificate of Examination will issue and the innovation patent will be enforceable.
Innovation patent or Standard patent? Which do you recommend? This largely depends on the invention and your budget. For most inventions, we recommend the provisional then standard patent application strategy. We only recommend an innovation patent for certain inventions because of its limitations.
At the same time, innovation patents achieve their purpose of providing protection for lower level inventions effectively. An innovation patent application can also work out to be cheaper at it does not have to go through substantive examination.
For the issues described above, we highly recommend you do not file your own innovation patent application. Call us to discuss if an innovation patent is suitable for your idea.
International PCT patent application
An international (PCT) patent application provides the ‘option’ of filing national applications in about 144 countries and lasts until about 30 months from the filing date of the first application (usually a provisional application). PCT stands for Patent Co-operation Treaty which provides a set of rules and regulations agreed upon by these countries to assist innovators around the world.
‘International’ patent: Although it is called an ‘international’ patent application, it is important to note it does not get granted as an international patent as explained below. There is no such thing as an international or worldwide patent.
‘Worldwide coverage’: The other incorrect term is that a PCT application ‘covers’ the 144 countries. This is only true if you take the additional step later on of filing the individual applications in all 144 countries. The PCT application is better thought of as maintaining the ‘option’ to file in these 144 countries.
What is the function of a PCT application? A patent applicant has 12 months from the filing date of their first application (usually a provisional application) to file corresponding patent applications overseas. If the applicant does not file a corresponding application in a specific country within this period, it is often the case that they will not be able to obtain any patent protection for that country.
In many cases, the 12 month period is not sufficient for applicants to decide which countries to invest IP protection in and which to leave out. Filing a PCT application effectively extends this 12 month period by an additional 18 months, or 19 months for some countries. This provides the applicant further time to raise capital or test their markets before making a final decision on countries.
Which countries are part of the PCT? Most of the major trading countries of the world are part of the PCT – Australia, USA, China, Japan, UK, France, etc. A full list is available here: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.
Which countries are not part of the PCT? Very few. The notable non-PCT countries are Argentina and Venezuela. The other countries are typically not of interest commercially for Australian patent applicants. A full list of non-PCT countries is available here: http://www.wipo.int/members/en/non_pct.jsp.
The pct application process
1. Filing of PCT application
The PCT application is filed close to or at the 12 month date from the priority date (filing date of the first application). The PCT application has a life of up to 30 months from the priority date. Thus, filing a PCT application defers selecting the countries of interest and the individual national application costs by an 18 month period.
2. International Phase
The 18 months or so life of the PCT is called the ‘international phase’. There are a number of steps that occur during this stage, and below are the most relevant to clients:
a) International Search Report (ISR) and Written Opinion (WO): The ISR will issue citing the most relevant prior art references for novelty and inventive step, and the WO will provide the examiner’s detailed opinion as to patentability, and a list of which patent claims are considered novel and having an inventive step.
b) (Optional) – Claim amendments: there is an option to respond to the ISR and WO by way of amending the claims (only) and/or providing arguments against the cited references.
c) PCT Publication: The PCT specification is published shortly after 18 months from the priority date.
d) (Optional) – Demand for International Preliminary Examination (IPE): There is an option to pay the Demand fee and proceed with IPE. This will allow the PCT to enter what is essentially a formal examination process, where the applicant can amend the claims and specification and submit arguments against the cited references. The aim in this process is to obtain a ‘clear’ International Report on Patentability (IPRP) where all of the claims are deemed novel and have an inventive step.
e) International Report on Patentability (IPRP): This will issue at the conclusion of IPE or will be similar to the WO if the Demand is not filed. A ‘clear’ IPRP assists in some jurisdictions such as Australia, New Zealand and Singapore down the track in that such applications will usually have favourable examination and will proceed directly to acceptance and grant. The ‘clear’ IPRP can thus reduce prosecution costs in multiple countries later on.
IPRP not binding: The opinion in the IPRP is however not binding on the patent offices of the world. It is thus usual for the US Patent Office and the European Patent Office later on to consider the search results in the ISR and the opinion in the IPRP, but they will likely conduct their own search and form a patentability opinion based on their local laws. Even if you do not have a clear IPRP, this does not mean that you will not be able to obtain patents overseas.
3 National Phase applications
As previously noted, there is no such thing as an international patent, a worldwide patent or a PCT patent. Before the end of the international phase, separate national or regional patent applications (e.g. Europe) must be filed in the countries of interest.
Deadline for entering national or regional phase: The deadline for filing the national/regional phase is calculated from the priority date, and is 30 months from this date in most countries (e.g. USA, Japan, China). Some countries provide an additional month to 31 months from the priory date (e.g. Australia, New Zealand, Europe). One notable exception is Canada, where the usual 30 month deadline can be extended to 42 months by paying an additional extension fee.
Separate national patent applications: Each national application then proceeds as a separate complete patent application and is subject to the patentability laws and requirements of the individual country in which the application is filed. The process for each national phase application is similar to the typical patent process described here. It is important to note there are separate renewal fees payable for each separate application.
Other patent services
IP Portfolio Review – Management of your cases
If you already have a number of patents, designs and trade marks, we can review your portfolio to help you manage your IP and increase their value. This includes identifying key IP cases and identifying IP cases that are no longer of value and should be abandoned. You will lower your IP costs once we start handling your cases.
Patent Infringement – Enforcement
We can assist you in enforcing your patent or defending you in infringement matters, as we have successfully done for other clients. Just because there is an allegation of infringement against you does not mean that the allegation is accurate. In a vast majority of cases, we are able to negotiate a mutually acceptable settlement for both parties which avoids court associated costs.
If you locate a pending patent application which may be detrimental to your business if the patent is granted, call us as there are a number of ways we can challenge the patent such as via an opposition process. Conversely, we can assist you in defending your patent application in the event of an opposition.
There are many reasons why patent searching is conducted such as:
a) Patentability search – an international search to locate publications (typically patent publications) which may be relevant to the novelty and inventive step of an invention;
b) Infringement search – to locate patents or patent applications in a specific country which you may infringe by commercialising a product in that country; and
c) Validity search – an international search performed in contentious matters such as oppositions or patent infringement matters to locate publications to show invalidity of a patent.
Most patent searches involve searching patent publications as these are given a patent classification related to their specific technology. This allows the searcher to perform meaningful searches for the limited time available specifically directed to the invention. As you can appreciate, it is not possible to search most other forms of worldwide publications in a meaningful manner such as magazines, product brochures, websites, etc.
Patentability search: As a patent applicant, we recommend you at least perform an initial general patentability search on Google and Google Patents. You can also try the European Patent Office searching website espacenet. There are other searching sites but these sites are the easiest ones to use.
What to do if I find something similar to my idea: Don’t panic! Call us as in most cases we can differentiate your invention. The general idea and purpose may be the same but your specific implementation of the invention may be of substantial commercial value.
For a filed provisional application, the Australian Patent Office can perform an International-type patentability search for a fee.
Infringement searches: In most cases, this involves a client who wants to sell a similar product already in the market or available overseas into Australia, for which there may potentially be a patent or patent application pending. This search can be performed in two ways:
1. Name search: a search for patents or patent applications limited to specific names or patent numbers you are aware of, such as company name, possible inventor names, etc. This search has a lower cost but it has limitations, being that if the relevant patent or patent application is in a name we are not aware of, it will not be revealed in the search.
2. Subject matter search: a more comprehensive search for patents and patent applications related to a specific invention, irrespective of the name of the applicant or inventor. This is a more complicated search and due to the inherent difficulties, we will engage a professional searcher on your behalf.
Please note: The fact is patent searching is difficult. It will provide a very good indication but it can never be 100% conclusive. The reasons why searching is difficult are outlined here.
Is patent searching a waste of time and money? No. For one thing, the commercial benefits of having a patent application in place far outweigh not having any IP protection to deter competitors. Secondly, patent searching will involve searching the same publications that the patent office will search. As such, there is a high degree of accuracy that you will deal with the same relevant prior art references.
For overseas patent professionals and associates
We can provide patent services in Australia and New Zealand as per other attorney firms, with the exception that the cost will be lower and you will be provided with an outline of the costs for your client from start to finish, including all renewal fees.
Your clients will benefit from lower costs, cost certainty, and no surprise charges.
Some of the services we provide include handling of:
- National phase applications
- Convention and non-convention applications
- Innovation patent applications
- Divisional applications
- Patent Prosecution – examination request, preparation of response to examination report
- Validity and Infringement Opinions
- Patent Opposition
- Patent Re-examination
- Patent specification drafting or redrafting of claims
- Advice on patentability in Australia and New Zealand, patent application procedure, strategy for patent filings and divisionals
- Preparation of assignment document and recordal
- Extensions of time applications
Please contact us on firstname.lastname@example.org for further information.
Other Frequently Asked
What rights does the patent provide?
The patentee can decide who can use the patented invention during its term. The patent is property and the patentee can decide how to deal with such property including for their exclusive use of the invention, providing a license to another party to use the invention, and selling the patent outright to another party.
How is a patent enforced?
In most cases, patents are enforced initially by sending a cease and desist letter to the infringer outlining why they are infringing a patent. Most cases of infringement are settled by negotiation between the patentee and the infringer. In our experience, potential infringers (especially those in business) are sensible and would rather have the matter settled quickly. It is rare for infringement cases to go to court because of the substantial costs that will be involved. If required, the patent infringement matter can be taken to court.
Is a confidentiality agreement required between a patent attorney and a client?
No. Section 200 of the Australian Patents Act provides that a communication between a registered patent attorney and the attorney’s client are privileged to the same extent as a communication between a solicitor and his or her client. Registered patent attorneys are under a strict obligation of confidentiality. In our experience, this has never been an issue in the profession.
Can I file a patent application for an invention I saw overseas?
No. Firstly, one requirement for a patent is that you are the inventor (i.e. you thought of the invention) or that you have title or rights to the invention from the inventor. Secondly, as the invention has been published/disclosed overseas, that publication destroys the novelty of the invention in Australia. If you modify the invention, you may be able to apply for a patent for the modified version.
When do I need to file a patent application?
Important: You need to file a patent application before publicly disclosing your invention (e.g. showing your invention on the internet, website, in a brochure, YouTube, your engineer, your mate, your neighbor) or conducting commercial activities (e.g. selling or offering to sell or license your product) in respect of the invention. Such actions may prevent you from getting a patent. You still have options if this has happened – give us a call and we will discuss your options.
How long does a patent last?
An Australian standard patent has a maximum term of 20 years from the complete application filing date. An Australian innovation patent has a maximum term of 8 years from the complete application filing date. Renewal fees are payable annually to keep the patent in force – from the 4th anniversary for a standard patent and from the 2nd anniversary for an innovation patent.
Do I have to wait for the patent to be granted before I can start selling or licensing my idea?
No. If selling your product will not infringe a granted patent (the vast majority of cases), you can start selling your product immediately after the provisional patent application is filed. You can mark your product as well as accompanying literature and websites with ‘patent application filed’, the patent application number or ‘patent pending’.
You can also approach other parties, such as companies, to pitch the idea to them for a potential license. Companies have varying approaches when it comes to dealing with idea submissions from the public.
What is a patent grace period?
If you have disclosed your invention publicly (e.g. to a prototyping engineer without a confidentiality agreement) without filing a patent application, Australia provides a 12 month grace period – where you can file a valid complete patent application within 12 months from the first disclosure date. Essentially, disclosures within 12 months prior to your complete application filing date are not considered when assessing the novelty of your invention. If this applies to you, call us immediately.
It is important to note a grace period should only be a last resort option and should not be relied upon as a matter of routine. For example, you cannot enforce a patent against someone who learnt the invention from your disclosure prior to your patent application filing date. Also, a very limited number of countries (Australia and the USA are two examples) have a notable grace period. In most other key markets, particularly Europe, there is no grace period and disclosure of your invention prior to your earliest filing date will likely prevent you from getting a valid patent in those other markets.
Do I need a confidentiality agreement after I file my provisional application?
Technically no – as long as you continue with the patent process. Disclosures after your priority date are not considered when assessing the novelty and inventive step of your invention.
However, if the other parties you are in discussions with will sign a confidentiality agreement, then we recommend you do so. The reason for this is that in some cases, close to the end of the 12 month life of the provisional application, the patent applicant may not have the capital needed to proceed with complete applications or a PCT application, or they may need more time to develop the invention further. In these cases, one option is refiling the provisional application.
Refiling the provisional application restarts the patent process and the 12 month life of the provisional – however, the new process will restart from the new provisional filing date (i.e. you will lose the filing date of the earlier provisional application). This means you will have a later priority date, and the discussions you had with other parties under a confidentiality agreement as above prior to your new filing date will then not destroy the novelty of your invention.