Patent Application Guide for Australia

This is 2 part series for patent application guide for Australia and Drawing specification for the patent application

Part 1: Patent Application Guide for Australia

Patent Benefits:

The protection provided by the Australian patent system is a major contributor to the success of new inventions and the millions of dollars in earnings that they generate.

Some of the benefits are:

• It gives you the right to stop others from manufacturing, using and/or selling your invention in Australia without your permission.
• It lets you license someone else to manufacture your invention on agreed terms or take legal action against people who are using your invention without your permission.
• It encourages Australians to continue their research, to develop new and innovative products, exploit new technology and promotes the transfer of technology to Australia.
• It gives our trading partners the incentive to provide similar rights and thereby protect our exports in markets overseas.

If you want to protect the way your invention works then patenting may be the most appropriate option.

If your invention is new, not publicly disclosed and has commercial potential, then you are ready to consider what type of patent will suit your needs.

TYPES OF PATENTS:

There are two types of patents granted in Australia - standard and innovation. You need to research them thoroughly before deciding which one suits your needs.

There are differences in the cost of the patents, the length of protection they offer, the time they take to process and the type of invention they seek to cover.

In order to have a patent granted on your invention, you need to file what is known as a complete application. Prior to filing a complete application, you can also file a provisional application. While a provisional application will not result in an enforceable granted patent it can be useful in establishing an early priority date.

PROVISIONAL APPLICATIONS

As a general rule, the priority date for your invention is the date on which you first filed a patent application that described your invention in detail. To get the earliest possible priority date on your invention, you can file a provisional application.

A provisional application doesn't give you patent protection on its own (there are no 'provisional patents'), but it's useful in establishing an early priority date if you operate in a highly competitive industry where constant innovation requires you to get the jump on competitors.

A provisional application also gives you time to determine whether your invention is worthy of further time, money and effort associated with filing a complete application for a patent. It is also cheaper to file a provisional application than a standard complete application. You can read more information on time and costs.

Although the technical or scientific details of your provisional application are not published, we will publish details (the invention title and applicant name) in the Australian Official Journal of Patents at filing.

If you wish to claim priority from your provisional application you must file a complete standard or innovation application within 12 months of lodging your provisional application.

Remember - filing a provisional application on its own does not give you patent protection

All provisional applications lapse after 12 months. If you do not file a complete application associated with the provisional or file a  PCT application within this 12 month period, you will lose any priority that your provisional application may have provided.

STANDARD PATENT

the standard patent gives long-term protection and control over an invention. It lasts for up to 20 years from the filing date of your complete application (or up to 25 years for pharmaceutical substances).

The invention claimed in a standard patent must be new (novel), involve an inventive step and be able to be made or used in industry.

An inventive step means that the invention is not an obvious thing to do for someone with knowledge and experience in the technological field of the invention.

Your invention must differ in some way from existing technology, but the difference must have resulted from something more than the simple application of published information and/or standard background knowledge.

Before a standard patent is granted, the complete application has to be examined by IP Australia. Examination before the grant of a standard patent is mandatory and can take from six months to several years (depending on the circumstances).

INNOVATION PATENT

An innovation patent lasts up to 8 years and is designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for your new device, substance, method or process.

An innovation patent is usually granted within a month of filing the complete application. This is because there is no examination before it is granted.

The innovation patent requires an innovative step rather than an inventive step, to protect an incremental advance on existing technology that may not qualify for standard patent protection rather than a groundbreaking invention.

An innovative step exists when the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention.

If you want protection for an invention with a short market life that might be superseded by newer innovations, such as computer-based inventions, an innovation patent is worth considering.

Important: Examination of an innovation patent will only occur if requested by the patentee, a third party or if the Commissioner of Patents decides to examine the patent. An innovation patent is only legally enforceable if it has been examined by us, been found to meet the requirements of the Patents Act, and has been certified.

Benefits of the innovation patent

• If it is examined and certified, the innovation patent offers the same level of protection as a standard patent in preventing others from copying your invention.
• Unlike a standard patent, you only pay to have an innovation patent examined when you need to stop others from copying your invention.

Limitations of the innovation patent

The innovation patent is granted without examination, which means the validity of the application is not verified by us. This may make the patent more difficult to sell or license until the patent has been examined and certified.

Also, you are unable to go to court to enforce the innovation patent until it has been examined and certified.

An innovation patent can only be applied for in Australia. You have to apply separately to other countries if you want to enforce the patents overseas.

STANDARD VS INNOVATION PATENT

There are three main differences between standard and innovation patents.

• The innovation patent is a relatively inexpensive form of IP protection. It is quick and easy to obtain for inventions that have a short commercial life or that offer comparatively small advances over existing technology but which do not have the inventive step required to get a standard patent.
• The standard patent provides longer protection for inventions that have a longer development and commercialisation cycle. An innovation patent may be granted for the same subject matter as a standard patent but it has a shorter term of protection - 8 years as opposed to 20.
• It is not necessary to have an innovation patent examined before grant (or even at any time after grant). However, an innovation patent must be examined and certified before you can enforce your rights. A standard patent application must be examined and a patent then granted before you can enforce your rights. In both cases, a fee must be paid prior to examination. Failure to pay the examination fee results in the standard patent application lapsing or the innovation patent ceasing.

Can an innovation patent be converted to a standard patent?

You can convert an innovation patent to a standard patent application in the period before it is accepted, but you have to be quick. That's because an innovation patent is accepted after a brief formalities check, which is usually within one month.

The quick guide to innovation versus standard patents

	Innovation patent	Standard patent
Your invention must:	Be new, useful and involve an innovative step	Be new, useful and involve an inventive step
The application should include:	A title, description, up to 5 claims, drawings (if applicable), an abstract and forms	A title, description, any number of claims, drawings (if applicable), an abstract and forms
A patent is granted if:	The application satisfies formality requirements (note: a 'granted' innovation patent cannot be enforced unless examined)	The application is examined and found to satisfy the relevant requirements of the Patents Act 1990
Examination:	Optional. Examination can be requested by you or anyone else	Mandatory. The relevant requirements of the Patents Act 1990 must be met before a patent is granted. Can only be requested by the applicant.
Certification:	If the innovation patent complies with the relevant requirements of the Patents Act 1990 in examination; only after certification can the patent be enforced	N/A
Publication in the Australian Official Journal of Patents:	At grant and again at certification	18 months from earliest priority date and again at acceptance
Protection period:	Up to eight years, if annual fees paid	Up to 20 years, if annual fees paid (or up to 25 years for pharmaceuticals)
How long does the process take?	Approximately 1 month for grant. Six months for examination if you make a request.	Six months to several years depending on circumstances

Applying for a patent can be a complex and time-consuming process.

We have outlined all the steps that need to be taken in order to ensure that the process is smooth.

1. Search patent databases, sales brochures and magazines to ensure your invention has not been created by someone else. If your invention was publicly known before you apply for a patent, you won't be able to get a patent.
2. Decide which type of patent best suits your invention. You may wish to file a provisional application first; then decide between filing a standard, innovation or an international patent (PCT) application.
3. Once it is filed, your application is checked and published. Please note that fees are payable at different stages of the patent process. An innovation patent is checked to ensure it satisfies the formality requirements, then granted and published in the official journal. A standard patent is normally published in the official journal before the examination.
4. The examination is mandatory before a standard patent can be granted and must be requested by the applicant. An innovation patent will be examined if the examination is requested but this is not a requirement for an innovation patent to be granted. Examination of an innovation patent can only happen after it is granted. For either innovation or standard patent to be enforceable, it must have been examined. The examination can also be expedited for standard patents or expedited under the Global Patent Prosecution Highway (GPPH).
5. Acceptance and grant of an innovation patent occur if it has satisfied the formality requirements. It is then published as such in the official journal. If the examination is requested and found successful then the innovation patent will be certified and published once again. A standard patent application is accepted once it has been examined and is then published. The standard patent is then granted if it is not opposed.
6. Pay annual fees to maintain your patent. Innovation patents can be renewed for up to eight years and standard patents can be renewed for up to 20 years (up to 25 years for pharmaceuticals).

Some common problems

Many patent applications that are filed without professional help are not successful for one or more of the following reasons:

• The original patent specification, whether provisional or complete, does not describe the invention properly.
• The invention is not new because the applicant disclosed it to the public before applying for a patent.
• The invention is not new because the applicant disclosed it to the public after filing a provisional application that did not adequately describe the invention; i.e. the provisional application did not provide an effective priority date.
• The invention is not new when compared with things that are already known; e.g. it has been published in an earlier patent document.
• The application is for something that is not patentable, such as a principle or idea, rather than its practical adaptation.

STANDARD PATENT APPLICATION PROCESS

Applications for standard patents are called complete applications. A complete application is necessary to actually have a patent granted whereas a provisional application provides you with a priority date and signals your intention to lodge a complete application.

The subject matter of a complete application for a standard patent needs to be new (novel), inventive, and useful. The term of the standard patent is 20 years.

The invention will be referenced against background knowledge in its technical field. This is sourced from common work practices as well as standard texts and handbooks, technical dictionaries and other material in the field.

To be eligible for patent protection your invention must:

• involve novelty (be new)
  • the invention has not been publicly disclosed in any form, anywhere in the world before the earliest priority date (the date at which the application is first filed)
• involve an inventive step
  • the invention must not be obvious for someone with knowledge and experience in the technological field of the invention

The process of granting a standard patent usually takes up to 5 years.

Filing the application

You can request a patent for your invention using eServices or by using a Patent Request form.

In order to keep the priority date of a provisional application, you need to apply for your standard patent with 12 months of filing your provisional. If you have a patent application overseas (a convention application) and want similar protection in Australia, you will need to file your patent application within 12 months of filing your overseas application.

Your application form needs to be accompanied by a patent specification.

Publication of details

Details (including the invention title) of the unexamined standard patent application (level AU-A) is published in the Australian Official Journal of Patents about 18 months after the application's earliest priority date.

Published patent applications are made available to the public through our website and are sent to certain libraries and overseas patent offices.

The publication is an important step for two reasons:

• It sets the date after which anyone using your invention without permission is unlawfully infringing your patent. That is, once you have a granted standard patent, you can take legal action for any infringements that occurred on and after the publication date
• The contents of your standard patent application are no longer confidential. Your invention becomes part of the knowledge of the general public and may therefore subsequently assist in advancing industry and technology.

Note: Publication of a patent does not guarantee that the patent is valid.

If your standard application is accepted, the patent is republished as an AU-B level publication. If your accepted standard application is subsequently amended, it is republished as an AU-C level publication.

Requesting examination of standard patent applications

After a standard patent application is submitted you must request examination within 5 years of the filing date. Typically, after 4 years from filing your application, we will direct you to request examination if you have not done so already. You must request examination within 2 months of the date of this direction or your application will lapse.

You can request examination (either voluntarily or after being directed to do so) by completing and submitting a Request for Examination and paying fees.

Once the examination is requested you can normally expect a reply within about 12 months, depending on our workload.

After examination, either an adverse report or a notice of acceptance is mailed. If it is an adverse report, you will have the opportunity to make changes to your application to overcome the objections in the report.

In response to your changes, subsequent adverse reports may be issued until all objections have been overcome. Once all objections are overcome, your application will be accepted.

If no response is filed within 21 months from the date of the first adverse report, your complete application will lapse.

Similarly, if you have not successfully addressed all the issues in the adverse reports within 21 months from the date of the first adverse report, your complete application will lapse

Important: If you request an examination on or after 15 April 2013, you will only have 12 months from the date of the first adverse report to overcome the objections or your application will lapse.

Acceptance, opposition and grant of the standard patent

Once all objections in the examination report are overcome, your application for a standard patent is accepted. Before the patent is granted, other parties (opponents) have three months to start opposition proceedings.

The most common reasons for opposing the grant of standard patents are:

• the application is identical or very similar to another patent application
• the patent applicant is not the true owner of the application

The opponent must show that your standard patent if granted, would be invalid.

When an opposition is filed, the patent applicant and the opponent each have an opportunity to submit evidence.

A hearing is then held before a Hearing Officer, who decides whether or not the opposition succeeds. If the opposition is successful, the patent applicant is usually given an opportunity to amend their patent application to overcome the problems.

If either party disagrees with the Hearing Officer's decision, they can file an appeal with the Federal Court of Australia.

Less than 2% of accepted standard applications are opposed, but if your application is opposed, you should consider consulting an IP professional.

If no opposition is filed and the acceptance fees are paid, your accepted standard application is sealed and a patent deed is sent to you.

What happens if I miss a deadline?

You may need to apply for an extension of time to restore a patent or patent application that has lapsed or ceased because you failed to pay a fee or take some other action in time.

For example, perhaps you have lost your priority rights because you did not file a complete application within 12 months of your provisional application.

To gain an extension of time you must explain in a declaration the chain of events that caused you to fail to take the action you should have done. You will need to pay any fees associated with your extension of time request and pay any unpaid fees (e.g. renewal fees). The outcome of this request will be assessed on a case by case basis. There is no guarantee that you will get the extension of time you requested.

Applications for innovation patents are called complete applications. A complete application is necessary to actually have a patent granted whereas a provisional application provides you with a priority date and signals your intention to lodge a complete application.

An innovation patent provides fast protection and is suitable for a device, substance, method or process that does not have the inventive step requirement needed to obtain a standard patent.

The owner of any new and useful invention that involves an innovative step can file an innovation patent application. The process to get a granted innovation patent is not as astringent a process as for a standard patent.

To be eligible for an innovation patent protection your invention must:

• involve novelty (be new); which means that the invention has not been publicly disclosed in any form, anywhere in the world before the earliest priority date (the date at which the application is first filed)
• involve an innovative step; which means the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention

A simple formalities check is conducted to ensure your application is in order. Generally, within 1 month you'll receive notification formally granting you an innovation patent (provided you with the filing fees are paid).

Please note that the innovation patent is granted without substantive examination. We do not assess whether the patent is valid, which may make it more difficult to sell or licence.

Filing the application

You can request a patent for your invention using eServices or by using a Patent Request form.

In order to keep the priority date of a provisional application, you need to apply for an innovation patent within 12 months of filing your provisional. If you have an overseas patent application (a convention application) and want similar protection in Australia, you will need to apply for your innovation patent within 12 months of filing your overseas application.

PATENT SPECIFICATIONS

The purpose of a specification is to describe your invention.

It should contain as much detail as possible, including:

• the technical features that are essential to the way your invention works
• the best way or ways you know of putting your invention into practice
• examples or drawings if they help describe the invention
• end with claims that define your invention.

You can search for examples of specifications online through AusPat. AusPat will allow you to search by filters including patent application number or accepted patent numbers.

Stay tuned for Part No. 2 Drawing specification for a patent application in Australia

Australian Design and drafting helping clients all over from Australia for patent design and drafting needs. We have a strict NDA agreement that allows protecting innovator rights. Contact us for more details.