Applying for a Patent in Australia

Applying for a Patent in Australia

Warning

Patents can take years to obtain and cost a considerable amount of money and it is strongly recommended that anyone considering one should seek professional assistance before applying for a patent.

If you have an invention and  if you demonstrate, sell or discuss your invention in public before filing an application you may not get a patent. It is prudent that before discussing your invention with colleagues, employees or partners have them sign a confidentiality agreement first.

Clearing up a misconception

An “International Patent” or a “World Patent“, that will protect your invention idea in every country on earth does not exist. To get patent protection in a given country you need to file for a patent in that specific country. There is however a convention known as the Patent Cooperation Treaty (PCT) which does offer some advantages and is explained later in this article.

In Australia there are 2 types of Patents

IP Australia (https://www.ipaustralia.gov.au/patents/understanding-patents/patent-basics) describes a Patent as:

“A patent is a legally enforceable right for a device, substance, method or process. For your application to be successful, your invention must be new, useful and inventive or innovative.”

When granted, a patent will give you exclusive commercial rights to your invention (a monopoly).

The type of patent you hold will determine the duration of your protection.

The differences between a Standard Patent and an Innovation Patent are:

Feature Innovation Patent Standard Patent
Length of validity 20 years (or 25 years for pharmaceutical patents). 8 years.
Reasons for choice 1.     When the product, process or invention had a longer product life cycle of up to 20 years.

2.     When you seek an investor to invest in your innovation, who requires robust patent protection.

1.     When the product, process or invention had a short product life cycle of up to 8 years.

2.     When the invention does not meet the inventive step requirement but does meet the innovative step requirement.

Disadvantages The process can take 2 to 6 years, or sometimes longer subject to the complexity of the item, challenges to its unique features and responses to those challenges. It is easier to obtain as it is not usually examined, however, it is not as valuable as a standard patent as the duration of the patent is 8 years instead of 20.
Application time frame Approximately 6 months, to several years. Approximately 1 month.
Cost Can be very expensive and include years of Patent Attorney legal fees, filing costs, challenge costs and other items. Compared to a standard patent, it is relatively inexpensive.
Invention  requirements Be new, useful, and involve an inventive step, that is, that the invention must be ‘non-obvious’. Be new, useful, and involve an innovative step, which is a less onerous requirement than the inventive step required for a standard patent
After the patent is granted, can the patent owner enforce the patent against infringers? Yes. No. If the owner of an innovation patent seeks to enforce it against an infringer, the patent first has to be examined (i.e. investigated to ensure that it meets all the requirements for a patent).
Does IP Australia investigate whether all the tests for a patent to be granted have been met? Yes, examination is mandatory. Not before the patent is granted.

 

Benefits of Australian patents

  • Provides you with the right to stop others from manufacturing, using and/or selling your invention in Australia without your permission.
  • Enables you to license someone else to manufacture your invention on agreed terms or take legal action against people who are using your invention without your permission.

Factors to consider if a patent is the right choice

A patent may be the right choice for you if:

  • After searching you find no other similar product or technology.
  • The financial benefits greater than the time, effort and money required to get and maintain a patent.
  • the protection a patent offers reduces the risks of intellectual property (IP) theft.
  • you have the resources to manage your IP
  • you own the invention and have it has not been made public.

Note:

A Provisional Application can be made if you are considering a patent as it gives you up to 12 months to consider your options before deciding to proceed with a patent application although a provisional application does not provide you with the protection of a full patent. A provisional patent is not as expensive and gives you the earliest possible priority date. A priority date establishes the fact that you are the first person to file a new invention with IP Australia.

What is ‘Prior Art’?

Prior art is any evidence that your invention is already known. Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention. If you discover the prior art after the patent has already been issued, there’s no obligation to cite the prior art in your issued patent. But should your competitors discover the same prior art, they could potentially use it to knock out your patent’s claims via litigation.

What is a ‘Priority Date’?

The priority date is the filing date of the very first patent application for a specific invention. Within 12 months of that first filing, a subsequent patent application for the same invention can be filed claiming this “priority right”.

Who can apply for a patent?

A patent can be owned by:

  • the inventor(s)
  • the person who has legally obtained rights to the invention from the inventor(s) or an intermediary
  • a company, organisation or other employer of someone who made the invention in the course of their normal duties.

How to apply for an Australian Patent

How to apply for an Australian Patent

To apply for an Australian Standard Patent follow the instructions on the IP Australia link:

https://www.ipaustralia.gov.au/patents/applying-patent/standard-patent-application-process

To apply for an Australian Innovation Patent follow the instructions on the IP Australia link:

https://www.ipaustralia.gov.au/patents/applying-patent/innovation-patent-application-process

To make a Provisional Application follow the instructions on the IP Australia link:

https://www.ipaustralia.gov.au/patents/applying-patent/provisional-application-process

For IP Australia information regarding international applications use the following link:

https://www.ipaustralia.gov.au/patents/applying-patent/international-application-process

Patent Cooperation Treaty (PCT) (Other countries)

PCT Contracting States and Two-letter Codes (153 on 2 October 2019)

AE United Arab Emirates

AG Antigua and Barbuda

AL Albania (EP)

AM Armenia (EA)

AO Angola AT Austria (EP)

AU Australia

AZ Azerbaijan (EA)

BA Bosnia and Herzegovina1

BB Barbados

BE Belgium (EP)2

BF Burkina Faso (OA)2

BG Bulgaria (EP)

BH Bahrain

BJ Benin (OA)2

BN Brunei Darussalam

BR Brazil B

W Botswana (AP)

BY Belarus (EA)

BZ Belize

CA Canada

CF Central African Republic (OA)2

CG Congo (OA)2

CH Switzerland (EP)

CI Côte d’Ivoire (OA)2

CL Chile

CM Cameroon (OA)2

CN China

CO Colombia

CR Costa Rica

CU Cuba

CY Cyprus (EP)2

CZ Czechia (EP)

DE Germany (EP)

DJ Djibouti

DK Denmark (EP)

DM Dominica

DO Dominican Republic

DZ Algeria

EC Ecuador

EE Estonia (EP)

EG Egypt

ES Spain (EP)

FI Finland (EP)

FR France (EP)2

GA Gabon (OA)2

GB United Kingdom (EP)

GD Grenada

GE Georgia

GH Ghana (AP)

GM Gambia (AP)

GN Guinea (OA)2

GQ Equatorial Guinea (OA)2

GR Greece (EP)2

GT Guatemala

GW Guinea-Bissau (OA)2

HN Honduras

HR Croatia (EP)

HU Hungary (EP)

ID Indonesia

IE Ireland (EP)2

IL Israel

IN India

IR Iran (Islamic Republic of)

IS Iceland (EP)

IT Italy (EP)2

JO Jordan

JP Japan

KE Kenya (AP)

KG Kyrgyzstan (EA)

KH Cambodia3

KM Comoros (OA)2

KN Saint Kitts and Nevis

KP Democratic People’s Republic of Korea

KR Republic of Korea

KW Kuwait

KZ Kazakhstan (EA)

LA Lao People’s Democratic Republic

LC Saint Lucia

LI Liechtenstein (EP)

LK Sri Lanka

LR Liberia (AP)

LS Lesotho (AP)

LT Lithuania (EP)2

LU Luxembourg (EP)

LV Latvia (EP)2

LY Libya

MA Morocco4

MC Monaco (EP)2

MD Republic of Moldova4

ME Montenegro5

MG Madagascar

MK North Macedonia (EP)

ML Mali (OA)2

MN Mongolia

MR Mauritania (OA)2

MT Malta (EP)2

MW Malawi (AP)

MX Mexico

MY Malaysia

MZ Mozambique (AP)

NA Namibia (AP)

NE Niger (OA)2

NG Nigeria

NI Nicaragua

NL Netherlands (EP)2

NO Norway (EP)

NZ New Zealand

OM Oman

PA Panama

PE Peru

PG Papua New Guinea

PH Philippines

PL Poland (EP)

PT Portugal (EP)

QA Qatar

RO Romania (EP)

RS Serbia (EP)

RU Russian Federation (EA)

RW Rwanda (AP)

SA Saudi Arabia

SC Seychelles

SD Sudan (AP)

SE Sweden (EP)

SG Singapore

SI Slovenia (EP)2

SK Slovakia (EP)

SL Sierra Leone (AP)

SM San Marino (EP)

SN Senegal (OA)2

ST Sao Tome and Principe (AP)

SV El Salvador

SY Syrian Arab Republic

SZ Eswatini (AP)2

TD Chad (OA)2

TG Togo (OA)2

TH Thailand

TJ Tajikistan (EA)

TM Turkmenistan (EA)

TN Tunisia6

TR Turkey (EP)

TT Trinidad and Tobago

TZ United Republic of Tanzania (AP)

UA Ukraine

UG Uganda (AP)

US United States of America

UZ Uzbekistan

VC Saint Vincent and the Grenadines

VN Viet Nam

WS Samoa (from 2 January 2020)

ZA South Africa

ZM Zambia (AP)

ZW Zimbabwe (AP)

 

Notes:

    1. Extension of European patent possible.
    2. May only be designated for a regional patent (the “national route” via the PCT has been closed).
    3. Validation of European patent possible for international applications filed on or after 1 March
    4. Validation of European patent
    5. Only extension of European patent possible. Applicants wishing to obtain patent protection in Montenegro should enter the regional phase before the European Patent Office (EPO) and seek the extension of the European patent application and the granted European patent to Montenegro as there is no national phase before the Intellectual Property Office of
    6. Validation of European patent possible for international applications filed on or after 1 December

Where a State can be designated for a regional patent, the two-letter code for the regional patent concerned is indicated in parentheses (AP = ARIPO patent, EA = Eurasian patent, EP = European patent, OA = OAPI patent).

Important: This list includes all States that have adhered to the PCT by the date shown in the heading. Any State indicated in bold italics has adhered to the PCT but will only become bound by the PCT on the date shown in parentheses; it will not be considered to have been designated in international applications filed before that date.

Note that even though the filing of a request constitutes under PCT Rule 4.9(a) the designation of all Contracting States bound by  the PCT on  the international filing date, for the grant of  every kind of  protection available and, where applicable, for the     grant of both regional and national patents, applicants should always use the latest version of the e-filing software used to generate the request form, or the latest versions of the request form (PCT/RO/101) and demand form (PCT/IPEA/401) (the latest versions are dated 1 July 2019). The request and demand forms can be printed from the website, in editable PDF format, at: https://www.wipo.int/pct/en/forms/, or obtained from receiving Offices or the International Bureau, or, in the case of the demand form, also from International Preliminary Examining Authorities. Where possible, applicants are encouraged to use ePCT-Filing in order to benefit from the most up to date PCT data.

(Source: https://www.wipo.int/export/sites/www/pct/en/list_states.pdf)

Patent Cooperation Treaty (PCT)

Patent Cooperation Treaty

The World International Property Organisation explains the Patent Cooperation Treaty  as follows: (https://www.wipo.int/treaties/en/registration/pct/summary_pct.html)

The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant’s option, with the International Bureau of WIPO in Geneva. 

If the applicant is a national or resident of a Contracting State party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the international application may also be filed with the European Patent Office (EPO), the African Regional Intellectual Property Organization (ARIPO), the African Intellectual Property Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.

The Treaty regulates in detail the formal requirements with which international applications must comply.

Filing a PCT application has the effect of automatically designating all Contracting States bound by the PCT on the international filing date. The effect of the international application is the same in each designated State as if a national patent application had been filed with the national patent office of that State.

The international application is subjected to an international search. That search is carried out by one of the competent International Searching Authorities (ISA) under the PCT and results in an international search report, that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding written opinion on whether the invention appears to meet patentability criteria in light of the search report results is also issued.

The international search report and written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw the application, in particular where the content of the report and opinion suggests that the granting of patents is unlikely, or the applicant may decide to amend the claims in the application.

If the international application is not withdrawn, it is published by the International Bureau, together with the international search report. At the same time, the written opinion is made available on PATENTSCOPE.

Before the expiration of 22 months from the priority date, the applicant has the option to request a Supplementary International Searching Authority (SISA) (an ISA willing to offer this service) to carry out an additional search of relevant documentation, specifically focusing on documents in the particular language in which that authority specializes. The goal of this additional search is to reduce the likelihood of further documents coming to light in the national phase that would make granting the patent unlikely.

An applicant that decides to continue with the international application with a view to seeking national (or regional) patents can, in relation to most Contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated office by furnishing a translation (where necessary) of the application into the official language of that office, paying to it the necessary fees and acquiring the services of local patent agents.

If the applicant wishes to make amendments to the application – for example, in order to address documents identified in the search report and conclusions made in the written opinion – and to have the potential patentability of the “as-amended” application reviewed – an optional international preliminary examination may be requested. The result of the preliminary examination is an international preliminary report on patentability (IPRP Chapter II) which is prepared by one of the competent International Preliminary Examining Authorities (IPEA) under the PCT and which contains a preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with an even stronger basis on which to evaluate the chances of obtaining a patent and, if the report is favorable, a stronger basis on which to continue with the application before national and regional patent offices. If no international preliminary examination has been requested, the International Bureau establishes an international preliminary report on patentability (IPRP Chapter I) on the basis of the written opinion of the ISA and communicates this report to the designated offices.

The procedure under the PCT has numerous advantages for applicants, patent offices and the general public:

    1. applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of seeking protection in foreign countries, appoint local patent agents in each foreign country, prepare the necessary translations and pay national fees;
    2. applicants can rest assured that, if their international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any designated office during the national phase;
      • on the basis of the international search report and the written opinion, applicants can evaluate with reasonable probability the chances of their invention being patented;
    1. applicants have the possibility, during the optional international preliminary examination, to amend the international application and thus put it in order before processing by the various patent offices;
    2. the search and examination work of patent offices can be considerably reduced or eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability which are communicated to designated offices together with the international application;
    3. applicants are able to access fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements;
      • since each international application is published with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and
      • for applicants, international publication on PATENTSCOPE puts the world on notice of their applications, which can be an effective means of advertising and looking for potential licensees.

Ultimately, the PCT:

    • brings the world within reach;
    • streamlines the process of fulfilling diverse formality requirements;
    • postpones the major costs associated with international patent protection;
    • provides a strong basis for patenting decisions; and
    • is used by the world’s major corporations, research institutions and universities in seeking international patent protection.

The PCT created a Union which has an Assembly. Every State party to the PCT is a member of the Assembly. Among the most important tasks of the Assembly are the amendment of the Regulations issued under the Treaty, the adoption of the biennial program and budget of the Union and the fixing of certain fees connected with the use of the PCT system.

The Assembly of the PCT Union has established a special measure to benefit (1)  an applicant who is a natural person and who is a national of and resides in a State that is listed as being a State whose per capita gross domestic product is below US$ 25,000 (according to the most recent 10-year average per capita gross domestic product figures at constant 2005 US$ values published by the United Nations), and whose nationals and residents who are natural persons have filed less than 10 international applications per year (per million population) or less than 50 international applications per year (in absolute numbers) according to the most recent five-year average yearly filing figures published by the International Bureau, and (2) applicants, whether natural persons or not, who are nationals of and reside in a State that is listed as being classified by the United Nations as a LDC. That benefit consists of a reduction of 90 per cent of certain fees under the Treaty.

Details concerning the PCT can be obtained by consulting the PCT website, the PCT Applicant’s Guide, published by WIPO in English and French and the PCT Newsletter, published by WIPO in English.

The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.

It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO.

The patent offices of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, the United States of America, the European Patent Office, the Nordic Patent Institute and the Visegrad Patent Institute act as International Searching Authorities under the PCT (status on July 1, 2018). An agreement enabling the office of the Philippines to act as ISA has been signed; however, this office has not yet commenced operations.

The patent offices of Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, the United States of America, the European Patent Office, the Nordic Patent Institute and the Visegrad Patent Institute act as International Preliminary Examining Authorities under the PCT (status on July 1, 2018). An agreement enabling the office of the Philippines to act as IPEA has been signed; however, this office has not yet commenced operations.”

In conclusion

Patents offer significant advantages that can be attractive not only to your company but to investors and financiers as they provide a level of protection. The downside is the time and cost involved in securing a patent. Whichever oath you decide upon it is important you weigh up all the factors first and seek professional advice.