Different types of patents - Phillips Ormonde Fitzpatrick

There are a number of different types of patent application. In Australia, these can lead to a standard patent or an innovation patent.

Provisional patent application

A provisional patent application is often the first step in the patent process.

A provisional patent application is required to describe the invention. We also describe the best embodiment (version) of the invention and include claims defining the invention. Where relevant, drawings are included.

A provisional application can be fairly speculative – which is often necessary at an early stage in the development of an invention.

The provisional patent application is not examined, and is not enforceable. Its most significant benefits are:

It provides a “priority date”. That is, the date from which the newness and inventiveness of the invention will be protected
Once a provisional application is filed, the invention, as described in the patent application, can be disclosed and/or commercialised without jeopardising future patent rights
Products can be marked as “Patent Pending”

If a provisional application is filed, a complete (or PCT) application must be filed within 12 months to ensure ongoing protection.

In that 12-month period further provisional applications can be fi led (if you develop improvements) to secure a priority date for those improvements.

Standard patent

The most common form of patent is the standard patent.

A standard patent application is filed with a
complete specification that fully describes the invention. It must include a description of the best embodiment of the invention, and claims that define the invention. A claim covers not only the embodiment and any examples described, but also variations that others may think of to try and get around the patent.

The complete specification is best drafted by a patent attorney who understands the technology being used. Drafting is a precise skill, melding technology and legal language.

Standard patent applications are published in the Australian Official Journal of Patents about 18 months after the application’s earliest priority date.

The patent attorney will generally seek to claim the broadest possible protection, with applications ranging from a few pages in length to many (even hundreds) of pages.

Ultimately, if a standard patent is granted and renewed as necessary, it will be effective for a 20-year term commencing on the filing date of the standard patent application.

Innovation patent

Innovation patents are a type of patent only available in Australia (although some countries have similar schemes). They are quicker and cheaper to obtain than standard patents, but have a number of important differences:

Innovation patents have a maximum term of eight years, compared with 20 years for standard patents
Innovation patents may include a maximum of five claims (unlimited for standard patents)
Innovation patents are granted without examination, usually within one to three months from filing, whereas standard patents are examined prior to grant, and usually take two to four years to grant
Innovation patents cannot be enforced (and you cannot even threaten enforcement) unless they have been certified by the Patent Office. The Certification process occurs after examination has been requested.
A lower level of “invention” is required to obtain an innovation patent
Innovation patents are published at grant
Unlike standard patents, third parties are not entitled to oppose innovation patents before grant or certification
Third parties may request examination of an innovation patent

Innovation patents may be useful:

Where quick grant is required to pursue an alleged infringer
Where the necessary inventive step cannot be established to obtain a standard patent
Where the invention has a limited commercial life reflected in the shorter patent term

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