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Before an application
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Early use or disclosure
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If you, or someone in your organisation, has invented or is developing a new product or process, consideration should be given to filing a patent application.
As the invention must be new at the time the patent application is filed, you should be considering options for patent protection early in the development cycle – and certainly before there is any non-confidential disclosure of the invention.
While it is not always essential to obtain a patent for a newly developed product or process, it is prudent to at least consider whether the patent system might be useful for you.
Even if you have already disclosed your invention, it may still be possible to file a valid patent application. You should seek professional advice in these circumstances.
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Searching
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Many inventors initiate some type of search before incurring significant patent costs. Searches are conducted to attempt to identify whether the use of the invention will infringe someone else’s patent, or whether someone else has already published details of a similar invention.
Possible types of searches include:
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a) An Internet search, using web search engines and suitable key words.
b) A search of the US Patent and TradeMark Office records, which include the full text of all US patents granted in recent years. See www.uspto.gov.
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c) An infringement or a patentability search performed by a patent search company. Subject to using a reputable and experienced provider, this is more likely to identify similar inventions as professional searchers know where and how to look. We can arrange searches through our own patent research company, IP Organisers Pty Ltd.
d) A search by the International Searching Authority at the Australian Patent Office. In order to request this type of search it is necessary to first file an Australian provisional application.
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One common approach is for an applicant to conduct his or her own investigations as outlined in (a) and (b) above as a first step, then instruct us to prepare and file a provisional application and request a search as outlined in (c) or (d). If an international (PCT) patent application is subsequently filed, the applicant may be entitled to a refund of part of the application fee where an earlier international type search outlined in (d) has been requested.
Searching can be expensive, complex and time-consuming. Accordingly, we recommend you discuss your searching requirements with one of our patent attorneys. This will ensure that any searches conducted will address your concerns, whether they be about possible infringement of another party’s rights or about the ability to obtain patent protection for an invention.
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Application
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Who can apply?
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The primary person who is entitled to grant of a patent is the inventor. There may be more than one inventor and it is important that all of the inventors are identified in the patent application.
If the invention was made during the course of employment, the employer will generally be entitled to grant of the patent for the invention.
There may be a third party who has obtained full or partial entitlement to grant of the patent, such as where one organisation uses another organisation to assist with the technical development of the invention.
A person entitled to grant of part or all of the patent may assign that entitlement to another person, including a company.
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Provisional application
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If you want to lodge a patent application before your invention is fully developed (perhaps when the inventive concept has been determined but the best way of implementing the concept has not), you can lodge a provisional patent application (see the explanation of a provisional patent application).
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Complete application
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A complete application for a standard or an innovation patent should be filed within 12 months of the filing date of the provisional application. This will ensure that the complete application maintains the priority date of the provisional patent application.
It is possible to file a complete application without having first filed a provisional patent application.
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Examination
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Standard applications
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When the Australian Patent Office is ready to examine your application, you will be asked to request examination and pay an examination fee. You have six months to do this. You may also voluntarily request examination.
Once examination has been requested, an examiner will review your patent application to ensure it complies with the requirements for patent grant. The examiner will be technically qualified in the general field of your invention.
The examiner will check that the specification describes the invention fully, and includes enough detail for another skilled person to perform the invention.
The examiner will also check that the invention is properly described.
Importantly, the examiner will conduct a search, normally of patent literature on global patent databases, to determine if your invention is new (novel) and includes an inventive step.
If the examiner has any objections to the application, they will be communicated by way of an examination report. You will be given an opportunity to argue against them or to amend your patent application in response to them. Dealing with examination issues is best handled by an experienced patent attorney.
You have 12 months to overcome the objections, although you can “buy” another nine months if you pay extra fees.
If or when the objections are overcome, or none are raised, the patent application will be formally accepted by the Australian Patent Office.
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Innovation application
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Innovation patent applications are not examined prior to grant. Before the patent owner can enforce the patent, examination must be requested and a process similar to that outlined above occurs. Successful examination will result in certification of the patent.
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Acceptance
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Australian patent law provides third parties an opportunity to prevent a patent being granted on a standard application.
This opportunity arises after the application is examined and accepted by the Patent Office.
There is a three month period after the acceptance is advertised in which any other person can lodge a “Notice of Opposition” to a patent being granted.
Oppositions are comparatively rare.
The opposition process usually requires the preparation of evidence by both the applicant and opponent in support of their position.
If the opposition is fully defended and goes to a hearing, it might take 18 to 36 months and will eventually be heard by a Senior Examiner from the Patent Office before a decision is made.
If your patent application was drafted and filed by Phillips Ormonde & Fitzpatrick, the same patent attorney would most likely represent you in the opposition.
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Grant
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Assuming there are no oppositions, or that any opposition is unsuccessful, your standard patent application will be “sealed” by the Patent Office and a patent will be granted.
This grant provides an enforceable right which can be used by the patent owner in court to take action against an alleged infringer.
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Licensing and assignments
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An assignment transfers ownership of a patent (or patent application) to another party. A licence is an agreement providing another party with rights to use the invention in a prescribed way. Both are written contracts.
Many inventors realise the value of their invention by assigning their rights or by entering into licensing agreements with other parties, perhaps to manufacture and market the product.
Such agreements should be drafted by lawyers proficient in this field of the law. Phillips Ormonde & Fitzpatrick Lawyers specialises in this field.
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Renewals
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A standard patent will remain in force for 20 years from the time you lodge a complete application, provided that you keep paying the annual renewal fees.
The first renewal fee must be paid by the fifth anniversary of the filing date of the complete application.
Renewal fees are scaled and gradually increase. This is to ensure that patents are not simply left on the Register after interest in them is lost.
In limited cases, some pharmaceutical patents may be extended beyond 20 years.
An innovation patent has a term of 8 years, subject to payment of annual renewal fees from the second anniversary of the filing date.
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Expiry or surrender
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Once a patent expires (due to it reaching the end of its term, or because it has been allowed to cease or has been surrendered), the subject of the patent is free for anyone to use.
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