Obtaining patent protection is often an integral part of your invention’s overall commercialisation. Without protection, it is open to be copied and profited from by just about anyone.
Before you file a patent application, be careful not to make any public disclosure of your idea, as doing so can potentially result in loss of the opportunity to patent it. However, in some countries, including Australia, if you make a public disclosure of an invention with the consent of a nominated person (usually the applicant), a ‘grace period’ applies. A grace period provides that such a public disclosure can be made without affecting the validity of a subsequent patent application (provided that a complete application is filed within 12 months of the disclosure).
Conversing with employees, business partners or advisers about your invention is permissible, but only where it is on a confidential basis. As such, written confidentiality agreements are often used as safeguards to protect against public disclosure.
Patent Information: What kind of subject matter is patentable?
The relevant patent office, Australia’s being IP Australia, is guided by the region’s patent law to determine whether your idea is patentable. In Australia, the basic requirements are that the idea be new, inventive and useful.
Devices, substances, methods and processes are all, generally, patentable subject matter under Australian law, as are business methods. However, subject matter such as artistic creations, mathematical models, plans or other purely mental processes do not fall under patentable material.
Patent Information: What is the patent process?
The filing of a provisional patent application in Australia is often the initial stage in obtaining one or more patents anywhere in the world and will protect your invention for 12 months. This allows you to further develop your invention or refine your patent specification, as well as helping you determine the commercial prospects of your invention and whether it is worthwhile to pursue patent protection beyond this stage.
Your provisional application must include a patent specification as well as forms detailing your application. The patent specification itself must provide a description of your invention and its characteristics, and should therefore be sufficiently broad so as to reduce the chance of circumvention by potential copiers. A registered patent attorney is specifically qualified to draft a specification in this manner, whilst carefully and accurately shaping the most appropriate patent rights sought for your idea. Provisional patent applications can now be filed online.
Furthermore, a patent search is often performed to identify possible relevant prior art. The patent information obtained from this search may enable you to assess the prospects of a successful grant and to moderate how you will prosecute your patent application in subsequent stages of the application process.
The next stage in the patent application process is the filing of a complete application. This must be done before the 12 month period has elapsed from the priority date. Failure to file a complete application within this 12 month period will result in a loss of priority.
The complete application may take the form of a complete national application with the relevant patent office or, where multiple countries are sought for patent protection, a Patent Cooperation Treaty (PCT) international application with the World Intellectual Property Organisation (WIPO).
Where strong market options are available overseas, the PCT application is generally used. The PCT application gives you the opportunity to obtain patent protection in any of the 140 or so countries which are party to the PCT. Establishing protection in a particular country subsequently involves filing what is called a “national phase application” in each such country, and must be done within 30 or 31 months of the priority date, depending on the country.
Depending on the number of countries in which you are seeking protection (and the associated costs), you may wish to simply file complete direct applications in each desired country without going through the PCT application process.
Patent Information: Who can provide me with more patent information?
Patent attorneys have unique qualifications which allow them to represent patent applicants or patent holders. They are trained to come up with ways in which an invention may be infringed, and accordingly to develop specifications which protect against potential copiers.
An insightful patent attorney combines technical expertise and legal knowhow to generate a strong combination of claims for your invention.
Patent attorneys are further able to engage in IP advice, managing various forms of IP from conception to transfer of rights, in addition to acting for clients before the Patent Office in patent opposition proceedings.
Important Disclaimer: The information on this website is not legal or professional advice. The information may:
- not be correct;
- only relate to the law or practice in a given country; and/or
- be outdated.