A patent provides a legally enforceable right to prevent others from using, selling, importing or making an invention for a period of 20 years.
The invention can be a device, substance, method or process.
What are the requirements for the grant of a patent?
A patent can be for any invention that satisfies at least the following requirements:
The invention must be ‘novel’ or new. In other words, the invention must not have been publicly disclosed or used anywhere in the world.
The invention must involve an ‘inventive step’. This means that the invention must not be obvious to a person who is experienced in the same technical field as the invention. An ‘obvious’ invention is one that would be arrived at ‘as a matter of course’ in light of the general body of knowledge known or used by those in the field of the invention.
The invention must be useful or have utility. In other words, the invention must achieve the purpose intended by the applicant/patentee.
Obtaining patent protection in Australia and overseas
Provisional patent application
The first step towards obtaining patent protection generally involves filing a provisional patent application. The provisional patent application will establish a ‘priority date’ for your invention, which is the date used for assessing the novelty and inventive/innovative step of your invention.
The provisional patent application lasts for 12 months, which is a useful period for deciding on whether to continue with the patenting process in Australia and elsewhere.
*Please note: a provisional patent application on its own does not provide any patent protection.
Options for pursuing patent protection in Australia and overseas
Within 12 months of filing the provisional patent application, you must decide how you would like to progress the patenting process. Applicants have two main pathways:
Direct filing This pathway involves filing a patent application directly in each of the countries or regions of interest (including Australia).
The PCT application This pathway involves filing an International (PCT) patent application. The advantage of the PCT pathway is that it provides you with at least an additional 18 months to decide on which countries or regions (including Australia) you wish to pursue patent protection. After filing the PCT application, a prior art (background) search will be performed and a preliminary non-binding opinion on the patentability of the invention will be provided. The PCT application must then be “nationalised” by filing a corresponding patent application in each of the countries or regions of interest (including Australia).
As noted above, regardless of which pathway (Direct or PCT) is taken, a separate patent application will need to be filed in each country or region of interest. Each patent application will then be examined according to the patent laws and regulations of the particular Patent Office in each country or region.
Australian patent application process
After filing a standard patent application in Australia, or entering the National Phase of a PCT application in Australia, examination must be requested within 5 years from the filing date. However, in practice, the Australian Patent Office will set an earlier deadline by issuing a Direction to Request Examination. Once the Direction issues, examination must be requested within 2 months. From our experience, the Direction will typically issue about 55 months from the filing date due to delays at the Australian Patent Office.
After requesting examination, it will typically be 12-18 months before a first examination report issues. The acceptance (i.e., allowance) deadline will be 12 months from the date of the first examination report.
Following successful examination, the application will proceed to acceptance and third parties are provided with an opportunity to oppose the grant of a patent within 3 months of the advertisement of acceptance. If there is no opposition, a patent will issue shortly thereafter.
The flow chart below outlines the stages in the standard patent application process in Australia.
The Convention deadline is 12 months from the earliest priority date.
The following documents and particulars are required:
A copy of the specification and abstract in English;
Full name and address of the applicant(s);
Full name of the inventor(s); and
If claiming Convention priority, details of the priority application.
PCT – Australian National Phase Entry
The national phase entry deadline in Australia is 31 months from the earliest claimed priority date.
The following documents and particulars are required:
The PCT application number or publication number; and
If the specification of the PCT application was not published in English:
an English translation of the PCT specification as originally filed; and
an English translation of any Article 19/34 amendments.
A Power of Attorney is not required.
A certified copy of the priority application(s) will not be required for filing.
What is a patent attorney in Australia?
Australian patent attorneys are both qualified in a technical discipline (e.g., engineering or science) and Intellectual Property law. This unique combination allows Australian patent attorneys to represent their clients in respect of patent matters, such as drafting of patent specifications and applying for or obtaining patents in Australia or overseas. In addition, Australian patent attorneys are able to provide advice in respect of infringement and validity of existing patent rights in Australia.
All communications related to Intellectual Property matters between an Australian patent attorney and their clients are privileged to the same extent as communications between solicitors and their clients.
How to become a patent attorney in Australia?
In Australia, a person must be registered under section 198 of the Patents Act 1990 (Cth) to practise or act as a patent attorney. Registration entitles the person to undertake “patent work” on behalf of someone else, such as applying for or obtaining patents in Australia or overseas, drafting patent specifications, and providing advice about the infringement and validity of patents.
To register as an Australian patent attorney, it is necessary to have:
A qualification in a field of science or technology that potentially contains patentable subject matter;
A qualification in Intellectual Property law; and
Relevant experience (minimum of 2 years) in patent searching, drafting patent specifications, preparing, filing and prosecuting patent applications in Australia and overseas, and providing advice on infringement and validity of patents.
In addition to the above, stringent personal requirements must be met (e.g., be of good fame, integrity and character).
The Trans-Tasman IP Attorneys Board (“Board”) is a statutory body responsible for administering the regulatory and disciplinary regimes for patent and trade marks attorneys in Australia and New Zealand. For more details of the registration requirements for Australian patent attorneys, please visit the Board’s website.
If you have any questions or require assistance, please contact us.