About IP

There are a number of different types of patent applications. 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 application is filed with a patent specification that describes the invention. This specification will typically describe the best embodiment (version) of the invention and include claims defining the invention. Drawings can also be included if they are relevant to describing the invention.

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

A 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 assessed.

>   Once filed, the invention, as described in the patent specification, can be disclosed and/or commercialised without jeopardising possible future patent rights.

>   Products can be marked as “Patent Pending”.

A provisional patent application establishes a 12-month period to seek further protection by filing complete patent applications in countries you wish to seek protection or by filing an international patent application under the Patent Cooperation Treaty (PCT).

Types of Australian Patent

There are two types of Australian patent – the standard patent and the innovation patent.

Innovation patents

Innovation patents are only available in Australia and are quicker and cheaper to obtain than standard patents, but give a shorter term of protection .

Innovation patents can be useful where

>   quick grant is required to pursue an alleged infringer

>   the necessary inventive step cannot be established to obtain a standard patent

>   the invention has a limited commercial life reflected in the shorter patent term.

Foreign patents

Many inventions have market potential overseas. If you want to market or manufacture your invention in other countries, you should obtain overseas patent protection.

There is no such thing as a global patent. In order to protect your invention in other countries you will need to apply for patents in each country (or region) in which protection is required.

You can do this by filing a separate patent application in each country of interest. Assuming you file your foreign applications within the requisite time limits, the filing date of your related Australian application will be applicable for all countries that are signatories to the Paris Convention (and a few others that have mutual recognition with Australia).

This approach may be cost-effective where protection is required in only a few countries.

Where protection is sought in a greater number of countries, it is usually more cost-effective to file a single international patent (PCT) application. An international patent application does not ever proceed to grant.

An application filed under the PCT automatically designates all member countries and is the basis for perusing national patents in countries of interest. National patent applications are pursued by initiating National Phase Entry in the countries where you wish your application to be protected.

You may choose to file both an international application and some direct national applications.
The filing of patent applications in other countries is an expensive process and careful thought needs to be given to country selection before proceeding.

Advantages of international applications include:

>   It is easier and more cost-effective to prepare a single international application than multiple national applications at what is usually an early stage in the commercial development of the invention.

>   An international search is conducted to determine whether the invention is new and includes an inventive step, and the report on the search can assist the applicant in making an informed decision as to whether to incur the costs of National Phase Entry.

>   National phase entry (and the substantial costs associated with that) can be delayed for a period of up to 30/31 months from the priority date during which time financial backing for the invention may be gained from an investor, or the invention may be sold or licensed to another party.

Regional patents

In some parts of the world, such as Europe, it is possible to file regional patent applications covering a group of countries.

For example, a European patent application can cover the countries that are members of the European Patent Convention. Although it is possible to obtain a single patent covering all of those countries, it is still necessary to validate the patent (once granted) in each European country of interest.

Regional patents are also available for some African countries, some Eastern European countries and some Middle-Eastern countries.