What is a Patent?
A patent is a form of intellectual property. It provides a mechanism for protecting invented devices, processes and methods which have the characteristic of providing a new way of doing something, or offers a new solution to a problem.
Certain criteria must be met before an invention can be patented. In essence, the device, substance, method or process must not only be new but must also be “novel, inventive and useful”.
A thorough procedural process must be adhered to in order to obtain patent approval.
There were 2 x ways to pursue a patent in Australia (not including international applications):-
(a) Provisional patent; and
(b) Standard patent.
There are differences between each type in terms of cost, what protection is offered (if any), application processing time, etc.
What is the Benefit of a Patent ?
If you have an invention but decide to disclose it publicly or commerialise it without first filing for a patent, your competitors and other third parties may attempt to make similar products based on your invention without needing to ask for your approval.
This could mean that larger enterprises who have greater economies of scale to manufacture and sell the products could end up marketing their version of the invention at a cheaper price than you. This may result in you losing market share and profitability.
In addition, without having a patent for your invention you will have difficulty licensing, selling or transferring the IP in the invention – given that others could just copy the invention it anyway. So, you could jeopardise that potential revenue.
If you delay in patenting an invention, there is also the risk that someone else could invent something similar and file a patent application for their invention. Once they have filed and obtained a priority date, it could well block your right to file a later patent application for your own invention.
A provisional patent application is an optional step which can be taken that indicates an inventor’s intention to lodge a later “complete” application.
A “complete” application can include:
(a) Standard Patent Application in Australia; and/or
(b) an International Patent Application.
A provisional patent application:
(a) only lasts 12 months from the date of filing. By the 12 month mark you need to decide whether or not proceed with a complete patent application;
(b) does not provide patent protection in its own right, further examination is still required.
You would normally apply for a provisional patent application if you:
(a) are not yet ready to file a complete application;
(b) unsure if the invention will be commercially viable and want to carry out further due diligence; and/or
(c) want to set the priority date.
The "priority date" in respect of an application indicates that your invention was the first one - it then acts in a defensive capacity by preventing other people from filing a patent application for the same invention. If at a later point in time you are granted a complete patent, you will be able to seek to enforce your IP right against anyone who has infringed the patent after the priority date.
A standard patent is a type of “complete” patent.
It can be filed as a first instance patent application or follow from an earlier filed provisional patent application. Generally, a provisional application is usually lodged if the invention is in its early stages and not yet fully developed or understood. A complete application is normally lodged in the first instance if the invention is finalised or close to being finalised.
Novelty and Inventive Step
The invention, as claimed in the Standard Patent Application, must be “novel” – that is, includes at least one new feature or a combination of features which are not shown in the prior art.
An inventive step is the inventive process the inventor undertakes when making the invention. It relates to the 'obviousness' of the new product, process or invention. That is, the invention, as claimed in the standard patent, must include a feature or combination of features which are considered to be non-obvious to a person skilled in the relevant field of technology.
If the examiner determines that the invention is novel and includes at least some advantage or function which is different to the prior art, then this increases the likelihood that the invention demonstrates an inventive step.
After the Standard Patent Application is filed, it must be examined by a Patent Examiner before it can be accepted for grant.
Examination must be requested within the prescribed time limits (i.e. it does not occur automatically). An examination fee must also be paid.
The Examiner will assess whether the Standard Patent Application meets the requirements of the Patents Act 1990.
Once the Standard Patent Application has been lodged and published, use of an invention by a third party without the applicant’s consent may lead to infringement.
Generally, 20 years
Once a patent expires, the protection ends and the invention enters the public domain, i.e. the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.
In Australia, the Patents Act 1990 and Patents Regulations 1991
provides the statutory framework in relation to patents.
Core Concepts of Patents
There are a number of core concepts relevant to Patents, which include, among others:
Secrecy and Confidentiality | Prior Use
Subject to certain exemptions under the Patents Act 1990 (Cth), such as, inadvertent disclosure without the consent of the applicant - information made publicly available before the filing/priority date of a patent application can invalidate the application. This is because, for an invention to qualify as a patentable invention, among other requirements, it must be novel/new.
Accordingly, it is important to keep the invention secret and confidential until you have applied for patent protection and thereby obtained a filing date.
In a practical sense, this means you should not:
(a) demonstrate, sell or otherwise commercialise your invention publicly;
(b) disclose your invention via social media or on the internet;
(c) otherwise publicly disclose the invention.
If you are considering limited disclosure of your invention prior to the filing date, for example, for the purpose of negotiations with supplies, manufacturers, investors - we recommend you have a Confidentiality Agreement / Non-Disclosure Agreement prepared and signed by the recipient of the disclosure, before you provide them with this information.
It is important before filing a Patent Application that you check your invention has not already been thought of by someone else or the invention already patented by another person. This will not only avoid wasting time and money filing an application, but will also minimise the risk of you inadvertently infringing another person’s patent rights.
This is the date upon which you first file a Patent Application.
If, for example, a competitor files an application at a later date for the same invention – that competitor would not be entitled to patent it due to your earlier priority date.
There does not exist what are referred to as a universal “world patent” or “international patent”. Patents are territorial rights. This means a patent granted in Australia only provides protection within Australia.
A separate Patent Application must be pursued for patent protection in overseas countries. If you are seeking patent protection in several countries, an option is to file an international PCT application, which is administered by the World Intellectual Property Organization (WIPO).
Australia is a signatory to the Patent Cooperation Treaty (PCT).
In general, the exclusive rights connected with a patent are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.