We can help you search for, prepare, file, examine & prosecute Australian patent applications.
Patents in Australia help to protect the intellectual property of a new invention or innovative process.
At Wynnes we can help to prepare your application and register the patent with you.
We also offer a Patent management service.
What is a Patent?
A patent is a legal right given by the Government to the patentee to exclusively exploit an invention described and claimed in the patent specification. The patent is granted for a defined period of time.
A patent is granted as a result of the patentee applying for a patent and satisfying the statutory requirements for a patent. One of the requirements is that the specification must disclose the invention in such a manner that when the patent has expired, members of the public will be able to perform the invention.The invention must also be novel, have an inventive step or innovative step depending on the type of patent application, be useful and be a manner of manufacture. The requirements are set out in the Patents Act 1990 and interpreted through the relevant case law.
In effect, the granting of a patent is a reward for introducing new technology into the country.
Advantage of a Patent
A patent provides the patentee with a monopoly to exclusively exploit an invention. In practice, the patent provides the patentee with a market advantage over the patentee’s competitors and gives the patentee time to secure market leadership in the relevant area of technology. A patent gives the patentee the exclusive rights to make and sell their invention. With a patent no one can legally copy the invention without obtaining authorisation from the patentee.
Furthermore, a patent is a legal right that may be assigned or licensed to others in consideration for an agreed sum of money.
Applying for a Patent in Australia
The preparation and filing of an application for a patent is the first stage in seeking patent or exclusive rights for your invention. The quality of the patent and its ability to withstand validity examination will depend on how well it is drafted. The value of the invention is dependent on the quality of the patent specification and a patentee will only be paid money if the patent can not be found to be invalid or bypassed. The quality of the patent specification is pivotal and we at Wynnes recognise this fact and only prepare patent specifications to the highest level of quality.
The patenting process is a dynamic process and the strategy adopted in following a patent program will depend largely on the changing commercial realities of the market place and the relevant technology. At any stage, however, the patenting strategy can be changed and it is recommended that a six monthly review of the situation should be made to confirm whether to proceed to the next stage.
1. Provisional Patent Application
A provisional patent application is an initial patent application that secures a priority date and initiates the procedure in obtaining a patent. A provisional patent application is a comparatively inexpensive patent application that allows the applicant time to commercially assess the invention before proceeding to the next stage. A provisional patent application has a term of twelve months. In order to maintain the priority date and have continuing effect, a complete patent application which is associated with the provisional patent application must be filed before the expiry of the twelve months period.
2. Complete Patent Application
(i) Standard Patent Application
A standard patent application is an application that may be associated with a provisional patent application or filed in the first instance. Unlike the provisional patent application, the standard patent application has a set of claims, which defines the patent monopoly sought by the applicant.
The standard patent specification is published 18 months after the priority date.
Within prescribed time limits, the standard patent application is examined for compliance with the statutory requirements. An official report is issued either accepting the application or objecting to the acceptance of the application on statutorily defined grounds. The applicant has an opportunity to respond to the objections. This process is called the prosecution of the application. It is not uncommon for the examiner to issue one or more adverse reports. During the prosecution of the application, the Patent Examiner endeavours to restrict the scope of the patent monopoly while the applicant tries to obtain the broadest monopoly possible.
When the patent application is accepted, the application enters a three month opposition period during which a third party may oppose the granting of a patent on the application. An opposition can only be mounted on statutorily defined grounds. Compared to the number of patent applications which are filed very few applications are opposed.
After the opposition period has expired and if there are no opposition proceedings pending, the application proceeds to grant and a patent is issued. The term of a standard patent is twenty years from the filing date of the complete patent application. This period may be extended to a further five years in special circumstances.
The period between filing a standard patent application and obtaining a granted patent may vary between one to five years or longer. The variation in the length of time before a patent is granted depends on whether examination is expedited, the number of reports issued, the length of time before a response is filed and whether opposition proceedings are initiated. There may be commercial reasons to accelerate or delay the obtaining of a granted patent for an invention.
(ii) Innovation Patent Application
An innovation patent application is a complete patent application that has a term of eight years. The innovation patent application proceeds to grant after it is filed without being examined. However before the patent rights can be enforced the patent must be examined and be certified. Inventions that have a relatively short commercial life span, have a minor but commercially significant improvement to an existing product or involve an innovative step are suitable inventions for an innovation patent application.
(iii) International Patent Application
An international patent application is a patent application under the Patent Cooperation Treaty (PCT) that can be filed with the Australian Patent Office and designating one or more of the countries which are party to the Treaty.
There are currently over 145 states party to the PCT including United States of America, Europe, Japan and China.
An international search report (ISR) and related written opinion will subsequently issue and the applicant has the further option of requesting international preliminary examination. The international preliminary examination must be requested within twenty-two months of the priority date or within three months of the ISR which ever is later. With international preliminary examination, the patentability of the invention described and claimed can be assessed and if deemed advantageous, amended, prior to the application entering the national phase stage.
At the national phase stage, the application must enter into one or more of the designated countries. If international preliminary examination has been requested national phase entry can be effected at any time up to 30/31 months from the priority date of the international patent application. If international preliminary examination has not been requested then national phase entry must be effected by 20/21 months after the priority date. Each national phase application will then be examined and prosecuted to grant before the relevant examining authority in the designated country.
Advantages of filing an international patent application compared with the filing of an application directly into a designated country include:
- providing an additional 18 months in which to determine the commercial success of the invention and to identify countries which will with time prove to be successful markets for the invention before incurring the considerable expenses in filing national phase applications, and
- being aware of relevant prior art identified in the international search report and objections raised during international preliminary examination that may also be raised during national phase examination. During international preliminary examination there is an opportunity to amend the specification and claims to avoid similar objections from being raised during national phase examination.
Patent Applications in Overseas Countries
A patent application may be filed in an overseas country with the filing of a national phase application during the national phase stage of the international patent application or directly with a separate application.
Patents are normally granted on a national basis. It is worth noting, however, that a European patent covering 38 member countries (and 2 possible extension states) may be granted from a single regional patent application. Regional patents may be granted in some African countries and some former Soviet states. However, there is no such thing as a world or international patent.
Patent applications in overseas countries are filed through our extensive network of patent associates in each country.