Filing a Patent Application in Australia
Patent Application Process
A patent provides the owner with a monopoly and the right to exclude others from commercially exploiting by making, using, selling or importing the invention covered by the claims of the patent, for the life of the patent in each country in which the patent is registered.
The process for obtaining a patent can vary depending on the type of patent sought and the patent strategy which is best suited to your requirements.
The process for obtaining a patent can vary depending on the type of patent sought and the patent strategy which is best suited to your requirements.
Conduct a Patent Search
Prior to filing a patent application, we recommend conducting a patentability search to determine the eligibility of obtaining patent protection for your invention.
Any relevant prior art found may prevent you from obtaining a valid patent or may need to be considered when drafting the patent specification.
Any relevant prior art found may prevent you from obtaining a valid patent or may need to be considered when drafting the patent specification.
File a Provisional Application
Usually the first step in the patent application process is filing a provisional application.
It should be noted that a provisional patent is not examined or granted. The main purpose of the provisional application is to establish a “priority” date internationally, and provide a basis for a later-filed complete application. The “priority” date is the filing date of the application, and is the date from which your protection begins.
It is useful in the early stages of an invention to allow the owner time to develop a working prototype of the invention and/or begin manufacturing and marketing the invention, to determine whether it will be commercially viable.
It is essential that the provisional application describes all the features of the invention otherwise any new information added later will not have the priority date of the first provisional application. If improvements are made to the invention after filing a provisional application, it is possible to file another provisional application as soon as possible which describes the invention including the improvements. This allows a new priority date to be established for the improved invention.
It should be noted that a provisional patent is not examined or granted. The main purpose of the provisional application is to establish a “priority” date internationally, and provide a basis for a later-filed complete application. The “priority” date is the filing date of the application, and is the date from which your protection begins.
It is useful in the early stages of an invention to allow the owner time to develop a working prototype of the invention and/or begin manufacturing and marketing the invention, to determine whether it will be commercially viable.
It is essential that the provisional application describes all the features of the invention otherwise any new information added later will not have the priority date of the first provisional application. If improvements are made to the invention after filing a provisional application, it is possible to file another provisional application as soon as possible which describes the invention including the improvements. This allows a new priority date to be established for the improved invention.
File a Complete Application
In order to maintain the priority date of the provisional application, a complete application must be filed within 12 months from the priority date.
Alternatively, it is possible to file a complete application at first instance in the country(s) of interest. This would generally arise where the invention is already fully developed, and you are confident you know what the inventive aspects of your invention are.
Complete patent applications may also be filed in one or more individual foreign countries or in respect of an international patent application under the provisions of the Patent Cooperation Treaty (PCT) if international protection is more appropriate.
The complete application includes a complete specification which must fully describe the invention and best known method of performing the invention. All information that is critical to the invention must be included in the patent specification. It must also include one or more claims which define the scope of protection sought for the invention and determine the monopoly which the patent will provide. The wording of the claims must also distinguish your invention from the prior art.
Alternatively, it is possible to file a complete application at first instance in the country(s) of interest. This would generally arise where the invention is already fully developed, and you are confident you know what the inventive aspects of your invention are.
Complete patent applications may also be filed in one or more individual foreign countries or in respect of an international patent application under the provisions of the Patent Cooperation Treaty (PCT) if international protection is more appropriate.
The complete application includes a complete specification which must fully describe the invention and best known method of performing the invention. All information that is critical to the invention must be included in the patent specification. It must also include one or more claims which define the scope of protection sought for the invention and determine the monopoly which the patent will provide. The wording of the claims must also distinguish your invention from the prior art.
Examination
Once the complete application is filed, the application will be examined by IP Australia to assess its eligibility for registration.
For a standard patent, IP Australia will issue a direction to the Applicant to request examination which, must be made within 2 months from the date of this direction.
During the examination process, it will be necessary to provide the results of any official searches that have been undertaken (i.e. a search performed by IP Australia or a foreign Patent Office) that may be relevant to the patentability of the invention.
The application will then be examined and the Examiner will search earlier published documents to determine if the invention is both new and inventive. The Examiner will then issue an adverse report raising any objections concerning patentability or formality requirements or issue a notice that the application has been accepted. If an adverse report issues, the Applicant is given the opportunity to overcome any objections raised by the Examiner.
For a standard patent, IP Australia will issue a direction to the Applicant to request examination which, must be made within 2 months from the date of this direction.
During the examination process, it will be necessary to provide the results of any official searches that have been undertaken (i.e. a search performed by IP Australia or a foreign Patent Office) that may be relevant to the patentability of the invention.
The application will then be examined and the Examiner will search earlier published documents to determine if the invention is both new and inventive. The Examiner will then issue an adverse report raising any objections concerning patentability or formality requirements or issue a notice that the application has been accepted. If an adverse report issues, the Applicant is given the opportunity to overcome any objections raised by the Examiner.
Publication
An application for a standard patent will be published and made available for public inspection about 18 months after its earliest priority date.
Once a standard patent application is granted you may be entitled to take legal action for any infringements that occurred from the date of publication.
Once a standard patent application is granted you may be entitled to take legal action for any infringements that occurred from the date of publication.
Acceptance and Grant of the Patent
Once through the examination phase, the application will then be accepted. The acceptance and details of the patent will be published shortly thereafter, and once published, there is a three month period in which other parties can formally oppose the registration of the application. If there is no opposition, then the application will be granted as a Standard Patent upon payment of the prescribed acceptance fees.
Term of the Patent
A standard patent can remain in duration for a period of up to 20 years, during which renewal fees will be required to be paid annually, beginning 4 years from the date of filing the complete specification, in order to maintain the patent.
Click on flowchart to view a printable PDF version
If you require any further information, or if we can be of further assistance to you, please do not hesitate to contact us.
