The Patent Registration Process

1. Determining whether your invention may be registered as a patent, and is patent registration for you?

To be registrable, your invention must be new, which means it cannot have been made public either inside or outside of Australia. This means it cannot even have been published in any document.

For a standard patent it must involve innovative steps. Meaning, it cannot be a step or improvement that would be obvious to persons with knowledge or experience in the same field as your invention.

For an innovation patent it must also involve an innovative step. Such that any difference between your invention and what currently is known and exists in the field of your invention, must make a substantial contribution to the working or use of that invention.

It must be useful. If you state that your invention is going to improve the way something works, it must do just that.

As patent protection can be expensive, you may elect not to go through the process due to the cost. If you don’t register, you won’t gain exclusive rights. By exposing your invention in the public domain, you prevent competitors being able to patent your idea. However, you cannot prevent them then from using your invention.

2. Filing an Application

When filing a patent application you must include details of your invention. You will be required to provide a written statement that accurately describes your invention and what about it you wish to protect. Our experienced patent attorneys will be able to assist you with this to ensure it meets the requirements set by the government department.

It is important to get the statement right, as a lot of patent applications have been rejected or suffered delays due to the description not accurately describing the invention. There has also been a lot of applications lapse because people have applied to protect an invention that is not patentable.

You cannotpatent merely an idea. Your invention must have a practical adaptation.

3.Examination

For both standard and innovation patents, examination by the government office is only conducted upon request and the relevant fee has been paid.

Innovation patents

If you wish for your innovation patent to be legally enforceable you must request examination. Otherwise, registration will be automatic, however, if you ever need to take legal action against an infringer, you could not rely upon this registration unless it was examined and certified by the government office.

Standard Patents

You may request early examination. However, the government office will prompt you to do so normally between one and two years of filing the application. You will then have six months to request the examination. Failure to make the request will result in your application lapsing and no protection being granted.

It may be a benefit to wait to request the examination to allow as much time to weigh up the progress in commercialising your invention and to assess whether you wish to progress the patent process.

Once examination has been requested, the government office will respond in approximately fourteen months time with a report if there are problems or a notice advising there have been no problems found and your patent is accepted.

If a report is issued, you will be given opportunity to respond and correct any issues found. If you do so successfully then a letter will be sent to you advising of acceptance.

Once accepted (or once certified in the case of innovation patents) third parties may then oppose registration if they have reason to do so, or reason to believe your invention is invalid. This opposition period will last for a period of three months. We make the additional comment that less than two percent of patent applications are opposed.

If no-one opposes your application during the set period then you will be sent a certificate once the period expires.

4.Registration

Standard patents will be protected for a maximum of twenty years, whilst an innovation patent will be for a maximum of eight years.

For a standard patent, annual fees will occur from the fifth year onwards to maintain the registration.

An innovation patent will initially be protected for two years with annual fees occurring from then on to maintain the protection.