Australian Patent Procedure

To be eligible for patent protection, an invention must be new (novel) and contain an inventive step. Because your invention must be new to obtain a patent in Australia, you must not publish or disclose the details of your invention to anyone before you have applied for a patent. For an invention to be considered patentable, it must not be an obvious improvement to a person with an average knowledge of the field. Don't assume that your invention is obvious just because it was obvious to you at the time or with hindsight.

There are two general categories of patents in Australia, which are a Standard Patent, and an Innovation Patent.

The level of inventiveness required for an Innovation Patent is lower than a Standard Patent but both categories require that the Innovation or Invention be "new" and not have been commercially exploited before a Patent Application has been filed.

There are exceptions in some overseas countries to this, for instance, in the United States there is a one year grace period but otherwise it is very important not to have previously commercially exploited or shown publicly the Innovation or Invention prior to a Patent Application having been filed in Australia.

The test for patentability for both a Standard Patent and an Innovation Patent is complex and very often, Patents can be obtained where an expert may consider the invention level to be very small. Professional advice on these questions is strongly advised.

SEARCHES

Applying for a patent can be expensive, especially if applications are made overseas. To avoid unnecessary expense being incurred by applying for a patent and finding out when it is examined that the invention is not new, we recommend that a search be carried out beforehand.

Collison & Co have access to a database of a wide range of patent records. We can search for patents for inventions similar or identical to yours.

With this information, you can decide whether to proceed with your application, change some aspect of your invention or to abandon your application.

APPLICATION

A main part of the Patent Application is the specification which has three functions, one of which may be to full disclosure of the best method of performance of the invention known to the applicant at the time of filing.

A first application will often be filed as a Provisional Patent Application, which will provide twelve months priority protection in most countries of the world if filed in Australia. This "protection" is only in connection with the priority date and a Provisional, as such, does not provide the right to stop others until further steps are taken.

The importance of obtaining a "priority date" is that this then establishes the "date of any Patent that is subsequently filed based upon this priority date".

This means that after the priority date has been established, you can both commercially exploit and publicly expose the Innovation or Invention.

The tests concerning publication are different for an Innovation Patent as compared to a Standard Patent and you should seek advice before relying upon these brief notes. Also, what is meant by commercial exploitation can be complex and it may possibly include simply commencing manufacture of product even though none of the product has been sold. Also, accepting an order prior to a Patent Application being filed and establishing a priority date, could also possibly amount to prior commercial exploitation even though no actual money has changed hands or any product delivered.

The Australian courts are currently insisting on a very high level of conformance with respect to the requirements under the Patent Act for a valid Patent and adherence to the detail of the law is very important indeed if any Patent Application is to result in a substantially valid Patent grant.

OVERSEAS PATENTS

By filing an application in Australia and establishing a "priority date" it is then possible to file in overseas countries within twelve months of that priority date and still claim the application in the overseas country as the date of the Patent filed in that country as the priority date established in Australia.

It is also possible to file an application under the Patent Co-operation Treaty within the so-called twelve month priority period and this can extend the right to file in independent countries subsequently by a period up to eighteen to nineteen months.

PUBLICATION

If you file a Provisional Patent Application and lodge in Australia Complete Specification within twelve months, then all of your documentation becomes available to the public eighteen months usually issue a Report rejecting the application for Patent on one or more grounds, including the fact that it is not an invention, that the claims do not cover anything that is new, that the claims are ambiguous and so on.

In Australia, the process is that an applicant is then given twelve months with the possibility of extending this for a further nine months to reply and in a sense negotiate with the Examiner to get an acceptable result.

If the Examiner accepts the result, there is a Notice of Acceptance issued and this is then published so that there is then provided a three month period during which any member of the public can oppose the application.

If there is no opposition, the Patent as a matter of course is then sealed with the payment of a further fee and thereafter, after a first six year period, renewal fees in the case of a Standard Patent for the remainder of the twenty year period from the lodgement of the Complete.

An Innovation Patent, however, requires a different process although the skill preparing an Innovation Patent may be the same as or even more complex than a Standard Patent.

An Innovation Patent has a total life of eight years from the lodgement of the application as a Complete and it has a limitation of five claims.

Upon application, an Innovation Patent is accepted as a matter of course subject to a formalities check but, in order to enforce any grant, it is necessary to apply for an examination and if an examination results with success, an Innovation Patent is then called a Certified Innovation Patent.

An Innovation Patent is accepted within about two to three weeks of an application being made although it can be filed subsequent to a Provisional Patent Application.

Immediately upon acceptance of an Innovation Patent, the information is published but we emphasise that it has not been examined.

EXAMINATION

One to two years after the Complete Application is filed, the Patent Office will direct you to request examination. The Patent Office will then examine the application to see if it fulfils all the requirements of patentability.

The examiner will usually issue an adverse report but these can be rebutted and/or overcome by amendments.

ACCEPTANCE & OPPOSITION

Once any objections raised by the examiner have been overcome and the examiner is satisfied that your application meets all the requirements for patentability, your application will be accepted. Notification of the acceptance of your application will be published in the Official Journal of Patents. After advertisement of the acceptance there is a period of three months during which any interested person can object to the grant of your patent.

If there is no opposition, your patent will be granted within four to five months of acceptance.

It is important to note that even though your patent has been granted does not mean it is valid. Any granted patent can be challenged in court and it is possible for a patent to be revoked.

RENEWALS

In order to keep your patent alive for its 20 year term, you must pay renewal fees. We will notify you when your renewal fees are due.

IN SUMMARY

This leaflet is intended as a guide to help you understand the terms we use and the procedures we will undertake on your behalf. It does not cover every aspect of the patent system in depth and is not intended to. If you have any questions at any stage of the process, please do not hesitate to ask your Patent Attorney.