Patent preparation & procedure

PATENTS: KEY FACTS

A key part of our work is “drafting”, i.e. preparing patent applications and progressing them through examination to grant. On a per/attorney basis our firm is one of the highest volume originating drafters of patent applications in Australia. When you ask us to prepare your patent application you take advantage of the experience we’ve gained from preparing hundreds of patent specifications. While we regularly prepare patent applications for complex inventions, we also help many small businesses and tradespeople protect simple innovations and products.

A patent is an exclusionary right granted by the Commonwealth to the patentee. The right that’s granted is the right to stop others from practising the invention that’s the subject of the patent.

When a patent is granted the patent office in the country in question issues a “Deed of Letters Patent”. In Australia, IP Australia is the government body responsible for checking that patent applications comply with the Patents Act. If it finds that the application is compliant then it will grant the patent and issue its own Deed.

The extent of the IP right conferred by a granted patent is defined by a series of concise statements called ‘claims’ that appear at the end of the patent specification. In the event of infringement litigation a Court will closely examine the claims to determine if their scope is broad enough to read on to an allegedly infringing product. If the product in question falls within the scope of at least one claim then patent infringement will be deemed to have occurred.

Apart from the claims, patent specifications usually have an initial section explaining the problem that the inventor has set out to solve. There then follows a section, typically having wording similar to the claims, summarising the critical elements of the invention.

Immediately before the claims there usually appears a description of a preferred version of the invention in sufficient detail for a person “skilled in the art” to understand and perform the invention.

The term of a standard Australian patent is 20 years. Renewal fees are payable on the fifth anniversary of the patent application date and annually for the rest of the term.

To read about the patent examination process, click here.

WHAT SORT OF INVENTIONS CAN BE PATENTED?

Section 18(1)(a) of the Australian Patents Act 1990 requires that a patentable invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, an English statute of the 17th century.

The Courts’ view of what constitutes a “manner of manufacture” has developed over time. Patents were initially granted for new types of apparatus or machines. From the mid 19th century however Courts recognised that industrial methods or processes may also comprise patentable subject matter.

Over the last twenty years patents have been granted for computer software and information distribution systems. More recently patents have been granted for certain types of business methods. However, this is an area of the law that is changing rapidly and what was patentable five years ago may not be patentable today.

An invention that is patentable subject matter in one country may not be in others.

WHAT ARE THE REQUIREMENTS FOR A PATENT APPLICATION TO BE GRANTED?

In order for a standard patent to be validly granted the invention must be “novel” and must be “inventive”
In Australia an invention will be novel if, prior to the patent application’s priority date the invention had not been sold, used in public, or described in a publication made anywhere in the world. The priority date is usually the date that the first patent application for the invention was lodged.
There is a one year grace period in Australia for public use or disclosure of the invention by the inventor or applicant. That is, if you have inadvertently published or publicly used your invention then that publication or use will not invalidate your subsequent application for a patent provided you apply within twelve months of your initial publication or use.
Many countries do not have grace periods. For example if you publicly use or disclose your invention in Australia prior to securing a priority date then you probably won’t be able to obtain valid patent rights in Europe.
Also, a patent that is granted in Australia with reliance on the grace period provisions may be unenforceable against parties that learnt of the invention due to the inventor’s or applicant’s disclosures prior to the application’s priority date.
If at all possible, ensure that there are no publications or public uses of the invention until a patent application has been filed and take steps to have the application filed without delay.
What is and is not “inventive” is a subjective question determined in light of the common general knowledge in the technical field of the invention at the time that the patent application was lodged.
It’s possible to obtain non-standard patents such as innovation patents, patents of addition and divisional patents. The novelty and inventive step requirements for these types of patents are different to those for a standard patent.

WHAT SORT OF INFORMATION MUST BE PROVIDED?

In order to prepare a patent application you’ll need to provide as much information as possible explaining:

the problem that the invention seeks to address.
why your invention is an improvement on earlier attempts to overcome the problem.
the differences between the invention and what was done in the past.
any variations to your preferred implementation of the invention that you might believe to be viable.
a clear description of the invention and of how the invention works to address the problem.
how you intend to commercialise the invention.
who the inventor is and, if you’re not the inventor, how you are entitled to the invention from the inventor

HOW MUCH DO PATENTS COST?

Typically between about $4,000 and $5,500 to prepare a provisional patent application for a reasonably straightforward invention. You should budget for $8,500 to $11,000 overall to obtain a granted Australian patent over a period of four years. Costs will be greater if the invention is particularly complex or if difficulties are encountered during examination of the patent application.

Renewal fees are payable for both innovation and standard patents.

HOW LONG DOES IT TAKE TO PREPARE A PATENT APPLICATION?

The answer to this question depends on present workload, the amount of information you can provide your attorney with and how complex the invention is. Usually your attorney will be able to prepare a patent application in one to three weeks. It may be possible to prepare the application more quickly in the event of an emergency such as imminent publication.