About IP

 

Prior to Filing

Before an application can be lodged, there are some critical steps that need to be taken.

Early Use or Disclosure

As an invention must be new at the time the patent application is filed, consideration should be given to 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 the possibility of pursuing patent application before any invention disclosures occur.

Even if the invention has been disclosed, it may still be possible to file a valid patent application. Professional advice in these circumstances should be sought.

Searching

Searches can be conducted to identify whether an invention is potentially patentable (i.e. new and inventive) and/or to assess whether the use of an invention would potentially infringe another party’s Intellectual Property rights.

Possible types of searches include:

>   An Internet search, using web search engines and suitable key words

>   A search on the database of a major Patent Office (e.g. the United States Patent Office)

>   An infringement or a patentability search performed by a patent search company such as IP Organisers Pty Ltd.

>   A search by the International Searching Authority of the Australian Patent Office. In order to request this type of search, it is necessary to first file an Australian provisional patent application and there is a time limit in which such the search must be requested.

 

The Application Process

Who Can Apply

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 unless specified in the contract of employment.

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.

 

Examination

When the Australian Patent Office is ready to examine a standard patent application, the applicant will be asked to request examination and pay an examination fee. Six months is given to do this. An applicant may also voluntarily request examination.

Once examination has been requested, an examiner will review the patent application to ensure it complies with the requirements for patent grant. The examiner will be technically qualified in the general field of the invention.

If the examiner has any objections to the application, they will be communicated by way of an examination report. The applicant will be given an opportunity to argue against any objections or to amend the patent application in response to them. Examination issues can be complex and are best handled by an experienced patent attorney.

Objections can be overcome over a 12 month period, although another nine months can be ‘bought’ if extra fees are paid.

If or when the objections are overcome, or none are raised, the patent application will be formally accepted by the Australian Patent Office.

An application must be formally accepted within 21 months of the date of the first examination report to prevent the application from lapsing.

 

Innovation patent application

Innovation patent applications are not examined prior to grant. Before the patent owner can enforce the patent, examination must be requested and a Certificate of Examination issued.

Acceptance

Once a complete application is accepted by the Patent Office, it is subject to a three month opposition period. That period commences from the date the acceptance of the application is formally advertised. Another party can file a “Notice of Opposition” opposing grant of a patent on the accepted application.

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 before the opposition is heard by a Senior Examiner from the Patent Office. After the hearing, a formal decision on the outcome of the opposition is issued by the Patent Office.

Grant

Assuming there are no oppositions, or that any opposition is unsuccessful, a standard patent application will be “sealed” by the Patent Office. This means that a patent is granted.

This grant provides a legally enforceable right in Australia which can be used by the patent owner in court to take action against an alleged infringer.

 

Licensing and Assignments

An assignment transfers ownership of a patent application or granted patent 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 assignment of 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 specialise in this field.

Renewals

A standard patent will remain in force for 20 years from the time of filing a complete application, provided annual renewal fees are paid.

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 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.

Expiry or Surrender

Patents can expire for many reasons including reaching the end of its term, or because it has been allowed to cease or has been surrendered. Once this happens, the subject of the patent is free for anyone to use.