Australian Patents

Applying For A Patent

The process of applying for all types of patent can commence with a provisional patent application, which must be filed before the invention is disclosed to any member of the public. Any improvement to the invention subsequently made can be the subject of a further provisional application, which must also be filed before the improvement is disclosed to any member of the public. Within 12 months of filing the first provisional application, a complete patent application must be lodged. Also at that time it is usually necessary to apply for foreign patent protection, if desired.

Alternatively, while less often recommended, one can file a complete application at the outset, without filing any provisional application. However, it is recommended that a provisional application is lodged in the first instance, since in most cases the invention is in its early stages and is often not yet fully developed or fully understood.

Any patent application is accompanied by a patent specification. The patent specification must describe the invention in sufficient detail to enable a skilled person to make the invention work. The best method of performing the invention known to the inventor must also be disclosed. In the case of a complete application, the patent specification ends with a number of claims that define the invention, and determine the scope of monopoly that is granted to the patentee. Care must be exercised in drafting any patent specification, as there are numerous pitfalls for the unwary, that at worst can lead to invalidity of the patent.

Standard Patent (20-Year Protection) - The Procedure

1. Standard Patent Application.

A complete application for a standard patent must be filed within 12 months from the date of the first provisional application. The patent specification can include new information, in addition to the subject matter of all of the provisional applications.

2. Examination of the Application

A request for examination must be lodged within five years of the filing date of the complete application, or within six months of the Patent Office issuing a direction to the applicant to do so.

The case must be in good order for acceptance within 21 months of the date of the first report of the examiner, or the patent application will lapse.

3. Acceptance and Grant

Once examination is complete, acceptance details are published. Third parties can oppose the grant of the patent within three months of publication of acceptance. Oppositions such as this are relatively rare. If there is no opposition, the patent will proceed to grant.

4. Annual Renewal Fees

Annual fees are payable on an application and the granted patent, commencing 5 years from the filing date, and ending 19 years from the filing date, payable before these dates.

Innovation Patent - The Procedure

The innovation patent system is designed to provide for the fast grant of a patent for inventions (innovations) with a lower level of inventive step than the level required for a standard patent. While legally speaking, an innovation patent is granted for an innovation rather than an invention, for the purposes of this discussion, the term "invention" will be used.

1. Innovation Patent Application.

As with a standard patent application, a complete application for an innovation patent must be filed within 12 months from the date of the first provisional patent application. If desired, the innovation patent application can be filed in the first instance, without filing a provisional application.

2. Examination and Grant of the Innovation Patent

There is an initial formalities check, and if the application complies with the formal requirements, an innovation patent is granted. The innovation patent is initially in force for a period of 24 months. It is important to note that the formalities check conducted prior to grant, does not include any investigation into whether the invention is patentable.

3. Certification and Enforcement

The innovation patent cannot be enforced, nor can threats of infringement be made until the innovation patent has been certified. To achieve certification, the innovation patent must be examined. Examination takes place on request made to the Patent Office.

After the innovation patent has been certified, it is possible for third parties to oppose the grant of the innovation patent.

4. Annual Renewal Fees

Annuities are payable on an innovation patent, and in most cases first fall due 24 months from the filing date.

Petty Patents

With the advent of the innovation patent, no further applications for grant of a petty patent are being accepted by the Patent Office. However, unless converted to an innovation patent application or a standard patent application, any pending petty patent applications will continue to be dealt with under the old petty patent system.

A petty patent has an initial term of one year from sealing, and can be renewed for a term expiring six years from its date. Opposition to a petty patent may be filed within 11 months of sealing of the petty patent. In view of the change in patent law resulting in, there will be no further discussion in relation to petty patents here.