Patents

Filing a Provisional Patent Application is usually the first step in the Patent process, regardless as to whether you are seeking a Standard Patent or an Innovation Patent.

The Provisional Patent Application establishes a ‘priority date’, and provides 12 months ‘international’ protection for your invention.

Once the provisional Patent application has been filed at the Patent office, you can proceed to make, use and sell your product.

Within 12 months of filing the provisional Patent application, you need to file a complete Patent application in Australia. If you want overseas Patent protection, any overseas Patent applications, and/or an international ‘PCT’ Patent application should be filed at this time.

Australia has two types of  Patents. The type of complete Patent application you should file depends on a number of factors, some of which are as follows:

Standard Patents

• last up to 20 years, and,
• need an ‘inventive step’. 

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc. Copyright 2021 Halfords IP

A standard Patent provides up to 20 years protection for your invention.

A standard Patent application is typically filed within 12 Months of filing a provisional Patent application, for an invention which satisfies the ‘inventive step’ threshold.

If, it doesn’t meet this threshold, then you may want to consider filing an ‘innovation patent’ application.

The Patent specification must provide a detailed description of the invention, should ideally include drawings showing all the details of the invention, and, include ‘claims’ defining the invention.

The ‘claims’ are a vital part of the Patent specification, as these will be interpreted by your competitors and/or the law courts in analysing the scope of protection of your Patent.

The contents of your patent specification are automatically published by the Australian Patent office, 18 months after the ‘priority date’ of your invention …which is usually the provisional application filing date.

A standard Patent provides up to 20 years protection for your invention.

A standard Patent application is typically filed within 12 months of filing a provisional Patent application, for an invention which satisfies the ‘inventive step’ threshold.

If, it doesn’t meet this threshold, then you may want to consider filing an ‘innovation Patent’ application.

When the examiner agrees that the specification satisfies the criteria, the patent application will be ‘accepted’.

‘Acceptance’ of the Patent application is then published, such that opportunity is provided for others to file an ‘opposition’ to the grant of the Patent. By way of example, if someone presented evidence that they were selling the same product prior to the ‘priority date’, then they may successfully prevent a Patent being granted.

An explanation of these steps is below:
An Opposition to the grant of an Australian Patent may be filed by any party, to challenge it’s validity. Reasons for opposing the grant of an Australian Patent may include that the invention is not a patentable invention (e.g. not new and/or inventive), that the specification does not comply with the formal requirements of the Patents Act (e.g. that the claims lack clarity or support on the specification described), and/or, to contest the ownership of the invention. The following provides a brief outline of the process.

Notice of Opposition
A formal Notice of Opposition must be filed by the Opponent within three months of the date of publication of acceptance/allowance of the Patent Application by the Australian Patent Office.

Statement of Grounds and Particulars
Within 3 months of filing a Notice of Opposition, the Opponent must then file a Statement of Grounds and Particulars. The Statement of Grounds and Particulars must identify the relevant sections of the Australian Patents Act which the Opponent intends to rely on throughout the Opposition process, and, must incorporate enough detail to allow the Patent Applicant to understand the case to which they have to respond, and, should include details of any documents, other disclosures of the invention, etc., which the Opponent believes contests the patentability of the claims, etc.

Evidence in Support
Within 3 months from filing the Statement of Grounds and Particulars, the Opponent then submits their Evidence in Support of the Opposition. Evidence in Support of the Opposition typically incorporates comments from one or more expert in the field of the invention, prepared in the form of a Statutory Declaration or Affidavit, outlining their opinion, as a person skilled in the technical field of the invention, as to why they believe that the invention may not be new, inventive, or otherwise patentable, etc. in light of the disclosures of the documents identified in the Statement of Grounds and Particulars.

Evidence in Answer
The Patent Applicant then has a period of 3 months within which to file their Evidence in Answer. Evidence in Answer is typically also in the form of a Statutory Declaration or Affidavit made by one or more expert in the field of the invention, but, seeking to contest the grounds, particulars and evidence in support which has been filed by the Opponent.

Evidence in Reply
Finally, the Opponent has a period of 2 months within which to file any Evidence in Reply. Evidence in reply is typically limited to responding to the Patent Applicant’s Evidence in Answer, and again is typically in the form of a Statutory Declaration or Affidavit made by the Opponent’s expert.

Opposition Hearing
A Hearing will then be scheduled by the Australian Patent Office. The Hearing may be held orally and/or by written submissions, at which a Hearing Officer will consider this submissions made and the evidence received by both the Opponent and the Patent Applicant. The Australian Patent Office hearing process is a reasonably informal process, and each party (typically represented by their patent attorney) is given an opportunity to present and argue their case against the case of the other party.

Decision
A formal Decision and a statement of reasons is typically provided to both parties within a few months of the hearing. The Decision may conclude that the Opponent is entirely successful and that the patent application should therefore not progress to grant, or, that the Opponent is entirely unsuccessful and that the patent application should be granted in its present form. Otherwise, in the event that the Opponent is at least partly successful, the Patent Applicant may be given an opportunity to amend their patent specification to overcome any issues identified as problematic, so that the Patent Application can then progress to grant in a modified form.

Appeal
If either party disagrees with the Decision, an Appeal may be filed to the Federal Court of Australia.

A standard Patent is granted for a term of 20 years, however, annual renewal fees (after the first 5 years) must be paid to keep the Patent alive.

The Patent is then able to be enforced against an alleged infringer.

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc. Copyright 2021 Halfords IP

Effective 26 August 2021, the Australian government is phasing out the innovation patent. It is no longer possible to file any new innovation patent. It is however still possible to file innovation patents as divisionals from already pending non provisional patent applications filed on or prior to 25 August 2021.

An Innovation Patent provides up to 8 years protection for your invention.

An innovation Patent application may alternatively be filed instead of a standard Patent application within 12 months of filing a provisional Patent application.

An innovation Patent has a lower inventive threshold than the ‘inventive step’ of a standard Patent application, known as ‘innovative step’.

A standard Patent application may also be converted into an innovation Patent application, and this is sometimes done as a ‘fallback’ option in the event of ‘inventiveness’ difficulties being encountered during examination.

The Patent specification must provide a detailed description of the invention, should ideally include drawings showing all the details of the invention, and, include ‘claims’ defining the invention.

An Innovation Patent may only have a maximum of 5 claims.

The ‘claims’ are a vital part of the Patent specification, as these will be interpreted by your competitors and/or the law courts in analysing the scope of protection of your Patent.

Shortly after the innovation Patent application is filed, the application is assessed to check that it complies with a number of ‘formality’ requirements. If it does, then it is immediately ‘granted’.

However, a ‘granted’ innovation Patent cannot be enforced against an infringer, unless it is ‘examined’ and ‘certified’.

The innovation Patent specification is immediately automatically published by the Australian Patent office as soon as it is granted. As such, your competitors can immediately see details of your invention at this stage, which may typically be a short time after the innovation Patent application has been filed.

Before an Innovation Patent can be enforced against a competitor, it must be examined and ‘Certified’.

Examination may be requested at any time.

A Patent Office Examiner will then review the specification, conduct a ‘prior art’ search, and, issue an ‘Examination Report’ which typically outlines any ‘objections’ to:

• novelty,
• innovative step, and,
• ‘patentable’ subject matter.

Often, these ‘objections’ will be capable of being overcome by making amendments to the ‘claims’ of your invention and/or presenting argument to the Examiner, outlining the differences and advantages of your invention.

When the Examiner agrees that the specification satisfies the criteria, the Innovation Patent will be ‘certified’.

The specification of the certified Innovation Patent is again automatically published by the Australian Patent Office.

Once the Innovation Patent has been ‘certified’, it is possible to enforce the Patent against an infringer.

An Innovation Patent lasts for a maximum term of 8 years, subject to payment of annual renewal fees.

An Australian Patent only protects you in Australia.

If you wish to protect your invention overseas, you need to pursue Patent protection in the countries/regions of interest.

There is no such thing as an ‘international patent’, although there are some ‘regional patents’, such as a single ‘European Patent’.

There are two options for getting overseas Patents, by either filing:

• separate applications in the country/ region, or
• an International ‘PCT’ patent application.

Australia has international agreements allowing Australian Patent applicants to file Patent applications in most foreign countries within 12 months of the first Australian Patent application while retaining the original priority date.

Australia is also a member of the Patent Co-operation Treaty (PCT), which allows an International PCT application to be filed by Australian Patent applicants seeking overseas Patent rights in more than just a few countries.

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc. Copyright 2021 Halfords IP

An International PCT Patent Application is typically filed within 12 months of filing the initial Provisional Patent application, to effectively ‘extend’ ‘international’ protection for an invention in the (approximately 150) PCT countries, for a period of (usually) 30 months from the ‘priority date’.

​At the end of this period, you must ultimately select the countries in you wish to pursue Patents, and initiate separate national/ regional Patent applications in those countries/ regions of interest.

The PCT Patent specification must provide a detailed description of the invention, should ideally include drawings showing all the details of the invention, and, include ‘claims’ defining the invention.

The ‘claims’ are a vital part of the Patent specification, as these will be interpreted by your competitors and/or the law courts in analysing the scope of protection of your Patent.

The contents of your Patent specification are automatically published by the World Intellectual Property Organisation(WIPO) 18 months after the ‘priority date’ of your invention …which is usually the provisional application filing date.

A few months after filing an International PCT Application, the PCT Examiner conducts an international search of the invention and issues a written opinion outlining comments on novelty, inventive step and patentability.

Once this is received, we can then review any documents identified by the PCT Examiner, and then prepare amendments to the claims, together with comments for further review by the Examiner.

We can then request the PCT Examiner to further consider the invention in light of any claim amendments and/or argument in rebuttal of the Examiner’s initial opinion, by filing a ‘Demand for International Preliminary Examination’.

An objective of going through this process is to obtain a ‘positive’ opinion from the Examiner in relation to novelty, inventive step, and industrial applicability of the invention.

The PCT Examiner then issues a Report outlining his final Opinion on Patentability following any submissions made by the applicant.

This report is communicated to the various National/ Regional Patent Offices, for the Examiners in those Patent Offices to take into consideration during any later examination processes in the countries which are selected by the Patent applicant to enter the ‘national/ regional phase’ of the application.

The applicant must then select the countries in which Patent protection is still to be pursued. This is known as ‘entering the national/regional phases’ of the PCT application. That is, out of the (approximately 150) PCT countries which are members of the PCT, the applicant must select the countries in which to proceed. Filing fees must then be paid to the relevant national/regional Patent Offices.

The national/regional applications will then individually be examined according to the Patent laws of the particular Patent Office.

In some countries/regions, the examination process will be quite streamlined if a ‘positive’ opinion has previously issued in the IPRP, and may result in a relatively quick and less costly examination process than may have otherwise occurred.

A Patent can only be granted to an Inventor(s), or to a person/company who has ‘entitlement’ to the invention from the Inventor(s).

If an Inventor is an Employee, and it is within the scope of the employees duties to ‘invent’, then, under common law, the Employer may automatically have ‘entitlement’ to the rights of the invention.

This really depends on how ‘inventive’ your invention is. Some of the main differences are:

Standard Patents,

• last up to 20 years, and,
• need an ‘inventive step’.

Innovation Patents (Note: effective 26 August 2021, new innovation patents can no longer be filed)

• only last up to 8 years,
• only need an ‘innovative step’, which is a lower threshold than for a standard Patent, and,
• are typically quicker and less costly to obtain, but are also meant to protect more ‘minor’ innovations

For an invention to be patentable, it must be considered to be a ‘manner of manufacture’. A ‘patentable’ invention must have a certain ‘technical’ quality, rather than being for aesthetics, pure mathematics, or for business schemes or plans.

In Australia, there is some difficulty in patenting business methods, software, etc.

Since 1 April 2002, Australia has had a ‘grace period’. This means that if the Inventor has disclosed the invention within the 12 months prior to filing the Complete Application, then a valid Patent may still be obtainable.