PATENTS
Overview
A patent registration in Australia will allow you to prevent competitors from manufacturing, using and patenting your invention. Filing a patent application will provide provisional protection before the application is examined and granted. After grant of the patent application, letters of demand can be sent to alleged infringers and action can be taken in court.
In addition, filing a patent application will allow you to mark your product with a patent number and properly engage in investment negotiations. Licensing, confidentiality and other agreements can be structured around the patent application.
Non-Disclosure Agreements
A patent application will serve to define your invention in explicit terms. Often non-disclosure agreements do not adequately define the invention. Also a non-disclosure agreement will not provide continuing protection for an invention once the invention has been made publicly available.
Requirements- Novelty & Inventive Step
In order to sustain a patent, the invention as defined in the patent must be new and inventive.
To be new, the invention must not have been shown to a member of the public in non-confidential circumstances or otherwise have been made publicly available in documentary form. This includes digital recordings.
Australia, the US and Canada provide a twelve month grace period for prior disclosures. Many jurisdictions such as Europe do not provide a grace period except in some limited circumstances. For this reason it is important that you file a patent application before you disclose your invention to a member of the public in non-confidential circumstances. If you have disclosed your invention in non-confidential circumstances then you must speak to a patent attorney as soon as possible. Grace period provisions are complex. For example, in South East Asia alone grace periods may apply in Indonesia, Malaysia, Philippines, Thailand, Singapore and Vietnam.
To be inventive, the invention must not have been obvious to a person skilled in the art at the time the application for the patent was filed. In considering whether an invention is inventive, examiners are able to combine the common general knowledge attributed to the person skilled in the art with one or more documents. Courts have generally found that a ‘scintilla of inventiveness’ is all that is required to sustain a patent. Nonetheless, different legal tests have been developed regarding whether an invention is new and inventive. It is recommended that you obtain the opinion of a patent attorney before concluding whether or not your invention meets these requirements.
In many countries, including Australia, the newness and inventiveness of an invention will be examined against disclosures and publications on a worldwide basis.
Requirements -Written Description
There are a number of written description requirements including:
(i) Best Mode
In general a patent specification must disclose the best mode of operation known to the applicant at the time of filing the application.
(ii) Enablement
In general a patent specification must enable the skilled addressee to perform the invention without undue experiment.
(iii) Adequacy of Description
The claimed invention must be described in sufficient detail that a person skilled in the art could reasonably conclude that the inventor had possession of the claimed invention. Adequacy of description is also known as fair basis. Adequacy of description protects against undue claim scope.
Disclosure Dates and Priority Dates
A date of disclosing an invention in non-confidential circumstances is known as a disclosure date. The date of filing an application provides a priority date. If a disclosure date is earlier than a priority date then a grace period may still apply.
If there are two filings one after the other, each filing will provide a different priority date. The first filing will provide a first priority date after which disclosures will not be prejudicial. The second filing will provide a second priority date after which disclosures will not be prejudicial.
Importantly, if the second filing introduced new material then non-confidential disclosures made before the second priority date (including between the first priority date and the second priority date) will be prejudicial to the new material. In the case of a prejudicial disclosure a grace period provision may still apply.
New Material
It is generally not possible to include new material after having filed a patent application.
It is however generally possible to file multiple applications and combine them, if done within 12 month of the first filing in the same convention country. In some circumstances it may be possible to request that an earlier application be disregarded. You should discuss all disclosures and filings with your patent attorney.
Types of Patent
The Australian patent system provides both standard and innovation patents. An innovation patent has a lower threshold of inventiveness and may be useful in particular circumstances. An innovation patent is a particular form of utility patent.
Term of Protection
When a patent application is filed in Australia, twelve months of provisional protection is provided in all convention countries.
For a standard patent, the term of protection in Australia is twenty years. For an innovation patent, the term of protection in Australia is eight years. Renewal fees are payable on an ongoing basis.
Overseas Applications
Australia is a member of the Patent Cooperation Treaty. This allows for a centralised preliminary examination procedure before proceeding into designated Patent Cooperation Treaty countries including the US, Europe and China.
Otherwise applications can be filed directly with individual convention countries up to twelve months after first filing a patent application in Australia. Priority from the earlier filing in Australia is maintained. Further information regarding filing applications overseas is available upon request.
There is no such thing as a worldwide patent.
Patent Preparation
A patent is a legal document that will be scrutinized with as much care as any other legal document defining a legal right (Decor Corporation Pty Ltd and Another v Dart Industries Inc (1988) 13 IPR 385). Drafting a patent application is a complex task requiring much attention to detail and many years of experience. For these reasons it is advisable that you do not attempt to prepare a patent application yourself. Additionally, by law in Australia, only a registered patent attorney or a legal practitioner instructed by a registered patent attorney can prepare a patent specification for someone else.
What is a patent claim?
A patent claim is a sentence that defines the legal boundary of an invention. The scope of a patent claim can be visualised by considering each of the features of the claim in terms of one of the preferred embodiments described in the patent. Notably, however, it is the wording of the claims that defines the monopoly and not the embodiment. This is of course subject to the patent specification providing adequate support to the claim. The rules of patent claim construction vary in different jurisdictions.
What can a patent protect?
A patent is able to protect the utility of a particular product, a new compound, a computer system, a business method, a method of manufacture, a method of operation as well as a multitude of other systems and methods.
Our fields of technical expertise include mechanical patents, software patents, electronics patents and physics related patents. Whilst we do not specialise in chemical or pharmacalogical inventions we are able to recommend patent attorneys who specialise in these areas.
Several examples are provided below.
A patent registration in Australia will allow you to prevent competitors from manufacturing, using and patenting your invention. Filing a patent application will provide provisional protection before the application is examined and granted. After grant of the patent application, letters of demand can be sent to alleged infringers and action can be taken in court.
In addition, filing a patent application will allow you to mark your product with a patent number and properly engage in investment negotiations. Licensing, confidentiality and other agreements can be structured around the patent application.
Non-Disclosure Agreements
A patent application will serve to define your invention in explicit terms. Often non-disclosure agreements do not adequately define the invention. Also a non-disclosure agreement will not provide continuing protection for an invention once the invention has been made publicly available.
Requirements- Novelty & Inventive Step
In order to sustain a patent, the invention as defined in the patent must be new and inventive.
To be new, the invention must not have been shown to a member of the public in non-confidential circumstances or otherwise have been made publicly available in documentary form. This includes digital recordings.
Australia, the US and Canada provide a twelve month grace period for prior disclosures. Many jurisdictions such as Europe do not provide a grace period except in some limited circumstances. For this reason it is important that you file a patent application before you disclose your invention to a member of the public in non-confidential circumstances. If you have disclosed your invention in non-confidential circumstances then you must speak to a patent attorney as soon as possible. Grace period provisions are complex. For example, in South East Asia alone grace periods may apply in Indonesia, Malaysia, Philippines, Thailand, Singapore and Vietnam.
To be inventive, the invention must not have been obvious to a person skilled in the art at the time the application for the patent was filed. In considering whether an invention is inventive, examiners are able to combine the common general knowledge attributed to the person skilled in the art with one or more documents. Courts have generally found that a ‘scintilla of inventiveness’ is all that is required to sustain a patent. Nonetheless, different legal tests have been developed regarding whether an invention is new and inventive. It is recommended that you obtain the opinion of a patent attorney before concluding whether or not your invention meets these requirements.
In many countries, including Australia, the newness and inventiveness of an invention will be examined against disclosures and publications on a worldwide basis.
Requirements -Written Description
There are a number of written description requirements including:
(i) Best Mode
In general a patent specification must disclose the best mode of operation known to the applicant at the time of filing the application.
(ii) Enablement
In general a patent specification must enable the skilled addressee to perform the invention without undue experiment.
(iii) Adequacy of Description
The claimed invention must be described in sufficient detail that a person skilled in the art could reasonably conclude that the inventor had possession of the claimed invention. Adequacy of description is also known as fair basis. Adequacy of description protects against undue claim scope.
Disclosure Dates and Priority Dates
A date of disclosing an invention in non-confidential circumstances is known as a disclosure date. The date of filing an application provides a priority date. If a disclosure date is earlier than a priority date then a grace period may still apply.
If there are two filings one after the other, each filing will provide a different priority date. The first filing will provide a first priority date after which disclosures will not be prejudicial. The second filing will provide a second priority date after which disclosures will not be prejudicial.
Importantly, if the second filing introduced new material then non-confidential disclosures made before the second priority date (including between the first priority date and the second priority date) will be prejudicial to the new material. In the case of a prejudicial disclosure a grace period provision may still apply.
New Material
It is generally not possible to include new material after having filed a patent application.
It is however generally possible to file multiple applications and combine them, if done within 12 month of the first filing in the same convention country. In some circumstances it may be possible to request that an earlier application be disregarded. You should discuss all disclosures and filings with your patent attorney.
Types of Patent
The Australian patent system provides both standard and innovation patents. An innovation patent has a lower threshold of inventiveness and may be useful in particular circumstances. An innovation patent is a particular form of utility patent.
Term of Protection
When a patent application is filed in Australia, twelve months of provisional protection is provided in all convention countries.
For a standard patent, the term of protection in Australia is twenty years. For an innovation patent, the term of protection in Australia is eight years. Renewal fees are payable on an ongoing basis.
Overseas Applications
Australia is a member of the Patent Cooperation Treaty. This allows for a centralised preliminary examination procedure before proceeding into designated Patent Cooperation Treaty countries including the US, Europe and China.
Otherwise applications can be filed directly with individual convention countries up to twelve months after first filing a patent application in Australia. Priority from the earlier filing in Australia is maintained. Further information regarding filing applications overseas is available upon request.
There is no such thing as a worldwide patent.
Patent Preparation
A patent is a legal document that will be scrutinized with as much care as any other legal document defining a legal right (Decor Corporation Pty Ltd and Another v Dart Industries Inc (1988) 13 IPR 385). Drafting a patent application is a complex task requiring much attention to detail and many years of experience. For these reasons it is advisable that you do not attempt to prepare a patent application yourself. Additionally, by law in Australia, only a registered patent attorney or a legal practitioner instructed by a registered patent attorney can prepare a patent specification for someone else.
What is a patent claim?
A patent claim is a sentence that defines the legal boundary of an invention. The scope of a patent claim can be visualised by considering each of the features of the claim in terms of one of the preferred embodiments described in the patent. Notably, however, it is the wording of the claims that defines the monopoly and not the embodiment. This is of course subject to the patent specification providing adequate support to the claim. The rules of patent claim construction vary in different jurisdictions.
What can a patent protect?
A patent is able to protect the utility of a particular product, a new compound, a computer system, a business method, a method of manufacture, a method of operation as well as a multitude of other systems and methods.
Our fields of technical expertise include mechanical patents, software patents, electronics patents and physics related patents. Whilst we do not specialise in chemical or pharmacalogical inventions we are able to recommend patent attorneys who specialise in these areas.
Several examples are provided below.
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A product
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A compound
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A computer system
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Software
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(These examples are not associated with our practice. Please see our disclaimer)
How much information must I provide?
The extent of the information that should be provided will depend on the invention. Generally a patent specification must contain all the information required for persons of suitable skill and knowledge to put the best method of the invention into effect. Failure to disclose important information could be fatal to the validity of the application as a whole.
Please see our example of a client information brief for : (i) a mechanical invention and (ii) a software invention.
Should a search be conducted before filing an application?
The links on our Searching Page provide access to several Patent Office databases.
The benefit of conducting either a cursory or professional search before filing a patent application is that the patent application can be tailored in view of the documents raised by the search. Generally documents raised by the search are likely to be cited during examination and an alleged infringer may also raise the documents in court.
Professional search firms often use commercial databases such as Derwent for searching. A professional search firm may charge between A$3500-$5,000 or more, depending on the requirements of the search. A cursory search of the commercial databases generally costs about $1500. If you would like us to assist in reviewing the search results, further charges will apply
If a cursory search is performed at least the US database and European database should be searched as a minimum using the links provided below. The Internet should also be searched to determine whether similar products are already on the market.
It is important to recognise that all searching is based on keywords and patent classes. Therefore no search can be considered to be fully conclusive. Also, patent applications are often only searchable by title before publication. Publication may occur more than 18 months after first filing an application.
The decision whether to perform a professional search before filing an application depends on all the surrounding circumstances including the likelihood of the commercial success of the invention.
Should drawings be prepared before filing an application?
Generally it is recommended that line drawings be prepared. In cases of a provisional specification sketches will suffice in most circumstances.
How can I estimate costs?
We will provide you with detailed cost estimates. In addition to these cost estimates we will write to associates to obtain cost estimates at the time of entering the national phase of an International Application. You can obtain comparative national phase estimates using online services such as the Global IP Estimator, IP Forecaster and Inovia Cost Calculator.
The extent of the information that should be provided will depend on the invention. Generally a patent specification must contain all the information required for persons of suitable skill and knowledge to put the best method of the invention into effect. Failure to disclose important information could be fatal to the validity of the application as a whole.
Please see our example of a client information brief for : (i) a mechanical invention and (ii) a software invention.
Should a search be conducted before filing an application?
The links on our Searching Page provide access to several Patent Office databases.
The benefit of conducting either a cursory or professional search before filing a patent application is that the patent application can be tailored in view of the documents raised by the search. Generally documents raised by the search are likely to be cited during examination and an alleged infringer may also raise the documents in court.
Professional search firms often use commercial databases such as Derwent for searching. A professional search firm may charge between A$3500-$5,000 or more, depending on the requirements of the search. A cursory search of the commercial databases generally costs about $1500. If you would like us to assist in reviewing the search results, further charges will apply
If a cursory search is performed at least the US database and European database should be searched as a minimum using the links provided below. The Internet should also be searched to determine whether similar products are already on the market.
It is important to recognise that all searching is based on keywords and patent classes. Therefore no search can be considered to be fully conclusive. Also, patent applications are often only searchable by title before publication. Publication may occur more than 18 months after first filing an application.
The decision whether to perform a professional search before filing an application depends on all the surrounding circumstances including the likelihood of the commercial success of the invention.
Should drawings be prepared before filing an application?
Generally it is recommended that line drawings be prepared. In cases of a provisional specification sketches will suffice in most circumstances.
How can I estimate costs?
We will provide you with detailed cost estimates. In addition to these cost estimates we will write to associates to obtain cost estimates at the time of entering the national phase of an International Application. You can obtain comparative national phase estimates using online services such as the Global IP Estimator, IP Forecaster and Inovia Cost Calculator.
PATENT LINKS
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IPAustralia: Australian Patent Office
http://www.ipaustralia.gov.au Info date: 28/10/2009 ------------------------------------------------------------------- The Australian Patent Office website provides information on patents, trade marks and designs in Australia. The website allows searching of the Australian patents, trade marks and designs databases. Full text patent document searching is presently not available. |
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SIPO: Chinese Patent Office
http://www.sipo.gov.cn Info date: 28/10/2009 ------------------------------------------------------------------- The Chinese Patent Office website is available in both Chinese and English. The website allows searching of the Chinese patents database. The website automatically translates Chinese patents using a machine translator. |
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EPO: European Patent Office
http://www.epo.org Info date: 28/10/2009 ------------------------------------------------------------------- The European Patent Office website provides information on the European patent application procedure. European patent database records are accessible through EpOnline/RegisterPlus. European patent documents are accessible through Espacenet. |
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JPO: Japanese Patent Office
http://www.jpo.go.jp Info date: 28/10/2009 ------------------------------------------------------------------- The Japanese Patent Office website is available in both Japanese and English. The website allows searching of the Japanese patents database. The website automatically translates Japanese patents using a machine translator. |
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IPONZ: New Zealand Patent Office
Info date: 28/10/2009 http:///www.iponz.govt.nz/ ------------------------------------------------------------------- The New Zealand Patent Office website provides information on patents, trade marks and designs in New Zealand. The website allows searching of the New Zealand patents, trade marks and designs databases. Full text patent document searching is presently not available. |
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USPTO: United States Patent Office
http://www.uspto.gov Info date: 28/10/2009 ------------------------------------------------------------------- The United States Patent Office website provides information on patents, trade marks and designs (design patents). The website allows searching of the US patents and trade marks databases. Full text patent document searching is available for patents granted after 1976. |
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WIPO: World Intellectual Property Office
http://www.wipo.int Info date: 28/10/2009 ------------------------------------------------------------------- The World Intellectual Property Office website provides information on the PCT patent application procedure. The website allows full text searching of published patent applications. Limited national phase information is available. |
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Patent Term Search
http://adamlaw.com.au/patent-term-search Info date: 23/11/2013 ------------------------------------------------------------------- Our experimental term searching tool. |
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Patent Number Search
http://adamlaw.com.au/patent-number-search Info date: 23/11/2013 ------------------------------------------------------------------- Our experimental number searching tool. |
*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.