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Patents

Patents

We offer professional advice on patent law issues, including invalidity and infringement, and we have close working relationships with patent attorneys who can file patent applications both in Australia and overseas on your behalf.

Meaning of a patent

A patent is a legally enforceable and exclusive right granted to commercially exploit an invention. This monopoly exists for the life of the patent, and stops others from making, using or selling your invention without permission. An invention is any device, substance, method or process which is new and inventive. Patents protect the way your invention works, what it does and how it does it (not its visual appearance). A patent is a commercial asset that can be bought, sold or licensed.

Types of patents

There are two different types of patents:

An Innovation Patent provides an 8 year protection term and is a relatively inexpensive form of patent protection. It is particularly suitable for inventions that have shorter life spans and don’t have the level of inventiveness required for a standard patent.

  • New (novel)
  • Innovative
  • No substantive examination process
  • Only enforceable once undergone substantive examination process and ‘certified’ by the Australian patents office

 

A Standard Patent provides a 20 year protection term (or 25 years for pharmaceutical substances). It is suitable for inventions where there is a longer commercialisation term and a significant investment has been made in research and development.

  • New (novel)
  • Inventive (non-obvious)
  • Substantive examination process
  • Enforceable when granted

Provisional applications

A provisional application is optional when applying for an innovation or standard patent. A provisional application does not give you a patent but is useful in obtaining an early priority date in competitive, fast-moving industries. This may be particularly useful to a startup as a provisional patent application gives you 12 months to decide whether you wish to proceed to an innovation or standard patent for your invention. This will allow your business to gain momentum using a relatively low-cost strategy to obtain a year of protection, while you test the market and refine your invention.

A provisional patent is not reviewed by an examiner during the 12 month period, but it must be carefully drafted to adequately capture all the claims that will be made in any subsequent applications, thereby ensuring an early priority date, whether in Australia or overseas. A provisional application is called “provisional” because it’s temporary. It will lapse after 12 months if you don’t file a complete application.

Disclosure can preclude rights

  • To be registrable, a patent must be novel and must not have been publicly used or published.
  • Disclosure of an invention (publically or commercially) before filing a patent application can preclude any patent rights.
  • Part of the process of examination is to do a prior art search to determine its registrability.
  • Obtain legal advice or consult a patent attorney before disclosing the invention.

International applications

To obtain patent protection in other jurisdictions, you can direct file in each country (‘’Paris route”) or file a single international application to obtain protection in multiple jurisdictions through the Patent Cooperation Treaty (PCT), which is administered by the World IP Organisation (WIPO). This is referred to as a PCT application (“PCT route”). In either case, the granting of a patent will be under the control of the patent office in the relevant jurisdiction in what is known as the “national phase”.

How long does it take to obtain a patent?

It can take several years to obtain a patent.

 Enforcement

A registered patent under the Patents Act gives you the exclusive right to exploit an invention and authorise others to exploit the invention. This will include the right to make a patented product, use a patented process to make a product, export a patented product, and sell a product which resulted from the use of a patented method. You can start legal proceedings for infringement if a person infringes your monopoly rights. You should seek legal advice before taking action against an infringer, as threats of legal proceedings are actionable in Australia under the Patents Act.