Terms of Use

PATENTS

Overview

A  patent registration in Australia will allow you to prevent competitors  from manufacturing, using and patenting your invention. Filing a patent  application will provide provisional protection before the application   is examined and granted. After grant of the patent application, letters of demand can be sent to alleged infringers and  action can be taken in court.

In addition, filing a patent application will allow you to  mark your product with a patent number. Licensing, confidentiality and other agreements can be  structured around the patent application.

Non-Disclosure Agreements

A  patent application will serve to define your invention in explicit  terms. Often non-disclosure agreements do not adequately define the  invention.  Also a non-disclosure agreement will not provide continuing protection for an invention once the invention has been made  publicly available.

Requirements- Novelty & Inventive Step

In order to sustain a patent, the invention as defined in the patent must be new and inventive.

To be new, the invention must not have been shown to a member of the  public in non-confidential circumstances or otherwise have been made  publicly available in documentary form. This includes digital  recordings.

Australia, the US and Canada provide a twelve month grace period for prior disclosures.   Many jurisdictions such as Europe do not provide a grace period  except in some limited circumstances. For this reason it is important that you file a patent application before you  disclose your  invention to a member of the public in non-confidential circumstances.  If you have disclosed your invention in non-confidential circumstances then you must speak to a patent  attorney as soon as possible. Grace period provisions are complex.  For example, in South East Asia alone grace periods may apply in Indonesia, Malaysia, Philippines, Thailand, Singapore and Vietnam.

To be inventive, the invention must not have been obvious to a person  skilled in the art at the time the application for the patent was filed.  In considering whether an invention is inventive, examiners are able to  combine the common general knowledge attributed to the person skilled  in the art with one or more documents. Courts have generally found that a  ‘scintilla of inventiveness’ is all that is required to sustain a  patent. Nonetheless, different legal tests have been developed regarding whether an invention is new and inventive. It is recommended that you obtain the opinion of a patent attorney before concluding whether or not your invention meets these requirements.

In many countries, including Australia, the newness and inventiveness of  an invention will be examined against  disclosures and publications on a  worldwide basis. 

Requirements -Written Description

There are a number of written description requirements including:

(i)            Best Mode

   In general a patent specification must disclose the best mode of operation known to the applicant at the time of filing the application.

(ii)          Enablement

   In general a patent specification must enable the skilled addressee to perform the invention without undue experiment. 

(iii)        Adequacy of Description

   The claimed invention must be described in sufficient detail that a person skilled in the art could reasonably conclude that the inventor had possession of the claimed invention.  Adequacy of description is also known as fair basis.  Adequacy of description protects against undue claim scope.

Disclosure Dates and Priority Dates

A date of disclosing an invention in non-confidential circumstances is known as a disclosure date.  The date of filing an application provides a priority date.  If a disclosure date is earlier than a priority date then a grace period may still apply.

If there are two filings one after the other, each filing will provide a different priority date.  The first filing will provide a first priority date after which disclosures will not be prejudicial.  The second filing will provide a second priority date after which disclosures will not be prejudicial.  

Importantly, if the second filing introduced new material then non-confidential disclosures made before the second priority date (including between the first priority date and the second priority date) will be prejudicial to the new material. In the case of a prejudicial disclosure a grace period provision may still apply.

New Material

It is generally not possible to include new material after having filed a patent application.

It is however generally possible to file multiple applications and combine them, if done within 12 month of the first filing in the same convention country.  In some circumstances it may be possible to request that an earlier application be disregarded.  You should discuss all disclosures and filings with your patent attorney.

Types of Patent

The  Australian patent system provides both standard and innovation patents.   An innovation patent has a lower threshold of inventiveness and may be  useful in particular circumstances. An innovation patent is a  particular form of utility patent.

Term of Protection

When  a patent application is filed in Australia, twelve months of  provisional protection is provided in all convention countries.

For a  standard patent, the term of protection in Australia is twenty  years. For an  innovation patent, the term of protection in Australia is  eight years.  Renewal fees are payable on an ongoing basis.

Overseas Applications

Australia  is a member of the Patent Cooperation Treaty. This allows for a  centralised preliminary examination procedure before proceeding into  designated Patent Cooperation Treaty countries including the US, Europe and China.

Otherwise applications can be filed directly with individual convention countries  up to twelve months after first filing a patent application in  Australia. Priority from the earlier filing in Australia is maintained.   Further information regarding filing applications overseas is available  upon request.

There is no such thing as a worldwide patent.

Patent Preparation

A patent is a legal document that will be scrutinized with as much care as any other legal document defining a legal right (Decor Corporation Pty Ltd and Another v Dart Industries Inc  (1988) 13 IPR 385). Drafting a patent application is a complex task  requiring much attention to detail and many years of experience. For  these reasons it is advisable that you do not attempt to  prepare a patent application yourself.  Additionally, by law in  Australia, only a registered patent attorney or a legal practitioner  instructed by a registered patent attorney can prepare a patent  specification for someone else.

What is a patent claim?

 A patent claim is a sentence that defines the legal boundary of an  invention. The scope of a patent claim can be visualised by considering  each of the features of the claim in terms of one of the preferred  embodiments described in the patent. Notably, however, it is the wording  of the claims that defines the monopoly and not the embodiment. This is  of course subject to the patent specification  providing adequate  support to the claim. The rules of patent claim construction vary in  different jurisdictions. 

What can a patent protect?

 A patent is able to protect the utility of a particular product, a new  compound, a computer system, a business method, a method of manufacture,  a method of operation as well as a multitude of other systems and  methods.

Our fields of technical expertise include mechanical patents, software patents, electronics patents and physics related patents. Whilst  we do not specialise in chemical or pharmacalogical inventions we are  able to recommend patent attorneys who specialise in these areas.

Several examples are provided below.

How much information must I provide?

The  extent of the information that should be provided will depend on the  invention. Generally a patent specification must contain all the  information  required for persons of suitable skill and knowledge to put  the best method of the invention into effect.  Failure to disclose  important information could be fatal to the validity of the application  as a whole.

Please see our example of a client information brief for : (i) a mechanical invention and (ii) a software invention.

Should a search be conducted before filing an application?

The links on our Searching Page provide access to several Patent Office databases.

The  benefit of conducting  either a cursory or professional search before  filing a patent application is that the patent application  can be  tailored in view of the documents raised by the search.  Generally  documents raised by the search are likely to be cited during examination  and an alleged infringer may also raise the documents in court.

Professional search firms often use commercial databases such as Derwent  for searching. A professional search firm may charge between  A$3500-$5,000 or more, depending on the requirements of the search.   A cursory search of the commercial databases generally costs about $1500.  If you would like us to assist in reviewing  the search results, further charges will apply

If a cursory search is performed at least the US database and European database  should be searched as a minimum using the links provided below.  The  Internet should also be searched to determine whether similar products  are already on the market. 

It  is important to recognise that all searching is based on keywords and  patent classes.  Therefore no search can be considered to be fully  conclusive.  Also, patent applications are often only searchable by  title  before publication. Publication may occur more than  18 months  after first filing an application.

The  decision whether to perform a professional search before filing an  application depends on all the surrounding circumstances including the  likelihood of the commercial success of the invention.

Should drawings be prepared before filing an application?

Generally  it is recommended that line drawings be prepared. In cases of a  provisional specification sketches will suffice in most circumstances. 

How can I estimate costs?

We  will provide you with detailed cost estimates. In addition to these  cost estimates we will write to associates to obtain cost estimates at  the time of entering the national phase of an International Application.  You can obtain comparative national phase estimates using online  services such as the Global IP Estimator, IP Forecaster and Inovia Cost Calculator.

PATENT LINKS