Under the Patents Act 1990 (Cth), a granted patent provides the owner with the exclusive right to an invention within the marketplace. Patent registration allows the owner to exploit the invention to the exclusion of others, providing opportunities to sell or licence the patent rights during the term of the patent which can be up to 20 years.

When is the appropriate time to register a patent?

Novelty is an essential criteria for the invention to be patentable. This means that the invention must be new at the time of filing. We therefore recommend that the option and strategies associated with considering patent protection be discussed early in the product or process development stage, and at a very minimum, at least before your first public or non-confidential disclosure of the invention.

Disclosure of an invention can often be fatal to its patentability, but there may avenues to overcome this.  For example, the nature of the disclosure may be sufficient to avoid it amounting to public disclosure or a grace period may apply.  These requirements differ from country to country.
Actuate IP can advise your business in a straightforward and practical way as to the considerations of when to file and any related novelty issues.

Registering a patent in Australia

The filing of the Provisional Application is often the first step in the patent process (following the relevant searches). The purpose of a provisional application is to establish the priority date, allowing the owner to subsequently disclose the invention.  It is world wide in its scope and more flexible than a complete application, as less detailed information regarding the invention is required. Hence if some modifications are made to the workings of your invention during the first 12 months, these can often be included in the subsequent complete application. However, a complete application can be directly filed if appropriate to the patent strategy.

Within 12 months of the filing date of the provisional application a complete application must be filed (and be ‘fairly based’ on the Provisional). In contrast to a provisional application, a complete application must include ‘claims’. The claims outline the monopoly to the invention that the owner is claiming.

Sometime after the complete application has been filed, IP Australia will direct the patent holder to request examination of the application (this can be 2 to 3 years after filing). Examination of the application by IP Australia involves a state of the art search by the patent examiner. Where any patentability issues arise, an examination report will be issued by IP Australia.  The attorney will then review and respond to any such report to overcome the patentability issues raised.

When initial patent searches have been conducted by the patent holder’s attorney prior to filing, any adverse issues raised by the examiner can be overcome with appropriate arguments in response and/or amendments being made to the specification itself.

Once all issues (if any) have been overcome, the application will be advertised as accepted and open to a 3 month opposition period, during which a third party can oppose its grant. If not opposed (the majority of patent applications are not opposed) the application will then be granted as a standard patent capable of enforcement as a legal right.
The patent specification is published by IP Australia 18 months from the filing/priority date (this date either being the provisional date or complete application filing date, where directly filed).

For a standard patent, annual renewal fees commencing from the 5th 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 2 years from the filing/priority date.

Registering a patent internationally

A patent granted in Australia is jurisdictional.  The rights which flow from that grant apply only to Australia and not other countries.  Accordingly, if you have a market in other countries, patent rights will need to be obtained in each country of interest.

Protection in each additional country of interest can be done by directly filing in that country.  Where filed within 12 months of the Australian application, that overseas filing will be afforded the earlier Australian priority date.  Countries which are signatories to the Paris Convention (of which there are approximately 160) can take advantage of this 12 month period.

An alternative to directly filing in each overseas country of interest, is utilising the Patent Cooperation Treaty (PCT)(of which approximately 120 countries are signatories). It provides a consolidated procedure allowing the patent applicant to nominate under a single application which it intends to file in.

The PCT must be filed within 12 months of the filing priority date.  Once filed it provides a further 18 months to defer the cost associated with then paying each of the national patent application costs arising with each country.  The PCT provides a valuable method of deferring the expensive costs associated with seeking patent protection in other countries.  It allows time for determining which overseas markets are commercially viable and plays a factor in determining in which countries to proceed with patent protection and the outlay of associated patent costs.

Each patent application in each country filed will be subject to that jurisdiction’s examination and patent procedure prior to grant. Actuate IP’s patent attorneys can assist with implementing a viable overseas filing and protection strategy to best meet your commercial needs.

Place an Online Enquiry to contact a Patent Attorney or call us on 1300 768 730.