Registering a Patent
When is the appropriate time to register a patent?For an invention to be patentable it must be novel at the time of filing the first application. This means that you must not have publicly disclosed your invention and the essential elements of the invention must not have been included in any other article or method publicly used or disclosed in any publication anywhere in the world.
We therefore recommend that the option and strategies associated with considering patent protection be discussed early in the product or process development stage; at minimum, before your first public or non-confidential disclosure of the invention.
Public disclosure of an invention can often be fatal to its patentability, although there may be avenues to overcome this. For example, the nature of the disclosure may not amount to a public disclosure, or a grace period may apply. However, avoiding public disclosure is recommended as it can either thwart the patentability of your invention or otherwise limit your scope of protection and the forums in which you can seek protection.
Actuate IP's patent attorneys can provide straightforward and practical advice about when to file your patent application and any issues concerning novelty.
- Find out more about How to Patent an idea or Invention
How to register a patent in Australia?After completing the appropriate patent searches, the next step in the patent registration process is to file a provisional application. The purpose of a provisional application is to establish the priority date, allowing the owner to publicly disclose the nature of the invention.
A provisional application is worldwide in scope, and more flexible than a complete application, as less detailed information is required. This is useful if further modifications are made to your invention during the first 12 months, as these can often be included in the subsequent complete application.
Filing a provisional application is not a mandatory step to securing patent registration in Australia. Actuate IP can advise whether filing a provisional application or filing the complete application directly is the most appropriate patent strategy for you.
A complete patent registration application must be filed within 12 months of filing a provisional application, regardless of whether the application is for a standard patent or innovation patent. In contrast to a provisional application, a complete application must include ‘claims’ that outline the monopoly to the invention that the owner is claiming.
Standard patentAfter the complete application for a standard patent has been filed, IP Australia will direct the patent holder to request examination of the application. This can take place up to three years after filing. The IP Australia examiner will conduct a ‘state of the art’ search and will issue an examination report if any patentability issues arise. Actuate IP’s patent attorneys can then review and respond to this report to address any patentability issues raised by this process.
The application will be advertised as accepted and open to a three-month opposition period, during which a third party can oppose its grant. If the application is not opposed (and the majority of patent applications are not opposed) the application will be granted as a standard patent capable of enforcement as a legal right.
Innovation patentFor innovation patents, IP Australia will conduct only a formalities examination on the application once filed. Because the application does not undergo substantive examination at this stage, innovation patents are generally accepted and registered within a month of the complete application being filed. However, registration of an innovative patent does not grant the owner enforceable rights against infringers. To obtain enforceable rights, the owner must obtain certification of their innovation patent. Substantive examination must be requested after registration and this process takes up to six months.
If approved, the innovation patent will be certified and will be capable of enforcement as a legal right. A third party is able to oppose certification at any stage after the patent becomes officially certified by IP Australia.
What fees apply to the patent registration process?For a standard patent, annual renewal fees commencing from the fifth year subsequent to the filing/priority date are required to be paid to IP Australia for the patent to remain in force for the remaining term (20 years for a standard patent). For an innovation patent, annual renewal fees commence two years from the filing/priority date.
Actuate IP prefers to be as transparent as possible with regard to costs. We progress our work for you in stages, so you are able to make decisions in line with your budget as the matter progresses. We provide estimates of the costs at every key stage, and if there is a change in the scope of the matter that affects our original estimate, then we will discuss this with you first.
How to register a patent internationally?A registered Australian patent provides protection only in Australia. If you are planning to commercialise your invention overseas, patent rights will need to be obtained in each country of interest.
It is possible to utilise the Patent Cooperation Treaty (PCT) to nominate for a patent in multiple countries under a single application. See our Filing Patents Overseas page for more details.
How can Actuate IP assist?Actuate IP’s patent attorneys can provide straightforward and practical advice to take you through the steps in registering a patent for your invention.
Contact Actuate IP to learn more.