FAQS
The answer to this question assumes that the foreign country is one of the ~170 countries that are signatories to the Paris Convention. It also assumes that the overseas company’s foreign application doesn’t make a priority claim that is earlier than your own.
In general, so long as you take steps to file a patent application in the foreign country, within twelve months of the date you first filed a patent application for your invention here and claim priority from your original filing, then your foreign patent application will have an earlier priority date than the overseas company’s. Therefore, the overseas company’s application won’t pose a barrier to your foreign patent application. However, the situation becomes more complicated if the oversease country in question is the USA because the USA used to have a first to invent patent system rather than the first to file system in place in the rest of the world. Consequently, the owners of older US patent applications may have prior rights due to an earlier “conception” of the idea even though they filed later.
A patent application consists of:
1. A patent request form, which includes details such as the identity of the applicant for the patent and the inventor, the title of the invention for which patent protection is sought and the details of any earlier patent applications from which priority is claimed; and
2. A patent specification, which is a technical and legal document that describes the invention and sets out the scope of the exclusionary patent right that is sought. Unless the patent specification describes a pharmaceutical or chemical invention then it will almost always include drawings. If the patent application is for a standard or an innovation patent then the patent specification must end with a set of patent claims. If the patent application is for a provisional patent application then the patent specification isn’t required to end with a set of claims. So you see, a patent specification is the part of a patent application that describes and claims the invention.
Since most attention is focused on the patent specification during examination of a patent application, people often tend to refer to the patent application and the patent specification as if they were the same thing.
When a patent application is examined it is checked to see if the invention that is being claimed is new and involves an inventive step when compared to the prior art base. The prior art base is basically information that was in the public domain, anywhere in the world and in any language, up to the date that the patent application was filed. So, the later the patent application’s priority date, the larger the prior art base will be and the greater the risk that the invention will have already found its way into that prior art base.
This is why it can be risky to unduly delay filing a patent application for an invention.
When you first file a patent application for a particular invention, the date that the application is lodged with the Patent Office becomes the application’s priority date. In some circumstances it’s possible to file a subsequent patent application, for the same invention, so that the subsequent patent application retains the priority date of the first patent application.
This can happen when a provisional patent application is filed as a first application and then subsequently a standard patent application is filed within one year claiming association from the provisional patent application.
Another common situation is when a first patent application for an invention is made in a Paris Convention country and then subsequently the owner of the first patent application files subsequent patent applications in one or more other Paris Convention countries within one year of the first filing.
There are a number of different types of patent and patent application. In Australia, Innovation Patents are suitable to cover innovations or ‘second tier inventions’ which are not considered to possess full inventive merit, but still make a substantial contribution over what is currently known or
used. They have a term of 8 years and are granted without substantive examination. They must be successfully examined before they can be used to sue an infringer and are limited to five claims. IP rights of this kind are often referred to in other countries as ‘utility models’.
Please note, the Federal Government phased out Innovation Patents in August 2021. Expiry date of all innovation patents (i.e. eight years after the last possible filing date of 25 August 2021) will be 25 August 2029.
A patent attorney is a specialised intellectual property professional who is qualified to represent inventors or patent applicants in front of the Australian Patent Office (IP Australia).
In Australia, a patent attorney is a separate qualification to being a lawyer or solicitor. IP protection can be quite complicated and a patent application must satisfy a number of stringent criteria in order to protect your invention and to allow you to enforce your rights, if necessary.
Australian patent attorneys have a technical qualification in engineering or science. This means they are well placed to protect inventions as they understand the innovative and technical concepts behind how specific inventions actually work.
They also must have completed examinations for subjects stipulated by the Professional Standards Board for Patent and Trade Mark Attorneys
When a patent lapses, its owner loses the exclusive right to the invention, i.e. the right to stop others from making, using, importing into, or otherwise exploiting product according to the invention in the country where the patent was granted. If someone else starts to exploit the invention then the owner of the lapsed patent is unable to enforce the now lapsed patent right. However, take care because:
1. It’s possible to have lapsed patents reinstated in some circumstances
2. Someone else may have an earlier, unlapsed, patent that is in force and which has claims that are sufficiently broad to cover the invention; and
3. There may be other intellectual property rights associated with the invention that haven’t lapsed. For example, design registrations that protect the visual appearance of the product or copyright that protects software that the product uses.
The day you file your patent application the content of the application is officially recorded along with that day’s date, which becomes the official filing date. The application is then accorded an application (or ‘serial”) number and any earlier priority date that you claim in your application is officially noted. All of these actions are necessary for your application to be recognised in the ‘queue” at the Patent Office so that it has priority for the granting of a patent over some one else’s later filed application for the same invention. So to that extent you are protected in that a person applying after you, with a later priority date claim, won’t usurp your place in the queue.
Filing a patent application won’t give you any standing to sue anyone else for patent infringement until a patent has actually been granted. You can’t launch patent infringement proceedings unless you have a granted patent.
Patent attorneys in Australia must follow a strict code of conduct and are bound by the Trans-Tasman IP Attorneys Board, which is the official, government body that regulates Australian and New Zealand patent and trade marks attorneys. They are obligated to keep all details of their clients’ inventions confidential, hence it is generally not necessary for Patent Attorneys to sign confidentiality or non-disclosure agreements (NDAs) with their clients.
As mentioned above, when you first file a patent application for a particular invention, the date that the application is lodged with the Patent Office becomes the application’s priority date. It’s then possible, within one year of the original patent application filing, to file a subsequent patent application, for example an overseas patent application claiming the priority of the first filed patent under the Paris Convention.
Now it may be that after filing the first patent application, and before filing the overseas patent application, you have come up with an improvement to the invention that wasn’t described in the first filing. In that case a second patent application, for example a provisional patent application, may be filed describing the improvement. The overseas application would then claim priority from both the first patent application and also claim priority from the second application and the patent specification of the overseas application would describe and claim the material in both the first and second applications. The second patent application is effectively an updating provisional application because it updates the invention description of the first patent application.
No, provisional patent applications don’t ever get examined. They are simply filed with IP Australia and accorded a priority date and Australian application number. Provisional patent specifications are kept on file for thirty years before being destroyed.
The purpose of provisional patent application is to stake a claim, priority date wise, for a subsequent complete patent application. It’s the complete patent application that will actually be examined.
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