What is a patent?

A patent is a legally enforceable exclusive right granted by a government for an invention. The invention can be a product, device, substance, method or process, and it must be new, inventive and useful. Patents are granted to the inventor of the invention, or someone (including a company) who has the legal right to the invention. Patents are national, or in some instances regional, and are available in most countries around the world. A patent includes a specification that describes the invention and sets out the scope of the rights.

Once granted, the owner of the patent will have several exclusive rights in the country where the patent is in force. The patent owner can control the:

  • manufacture of a patented product
  • use of a patented product or process
  • importation of a patented product
  • importation of a product made by a patented process.

In Australia, there are two different types of patent available – a standard patent and an innovation patent. A standard patent has a term of 20 years, and an innovation patent has a term of eight years.

What can be patented?

Patents protect the way things work such as new or improved products, processes or methods. For example, a chemical scientist may develop a new substance or treatment process, or an engineer may create a new piece of equipment, or a part.

There are a number of things that cannot be patented. For example, a patent cannot protect purely mental processes such as artistic creations, abstract ideas, mathematical models, plans or schemes, nor can a patent protect a scientific principle or a natural phenomenon such as gravity. There has to have been some human intervention and creativity to make something new and useful, in order to qualify for patent protection.

Examples of patentable inventions:

  • New or improved products – E.g. stents, vacuum cleaner bags, sports equipment, sandwich press, oral care implements, surfboard carrier, electric motor controllers, security devices, switches and valves.
  • New or improved processes – E.g. streaming multimedia data, applying labels, polymer manufacturing process, reducing nitrogen oxide emissions, nanoparticles and their production, method for replacing elevator cables.
  • New uses of known compounds and devices – E.g. pharmaceutical composition of known constituents taking advantage of unknown property for new use, a device used in a new way to overcome practical difficulties.
  • Method of medical treatment or diagnosing disease – E.g. detecting and treating gastrointestinal diseases, method for treating malaria, sedation drugs, delivery methods, method for skin regeneration, treatment of addiction, pharmaceutical composition of known constituents taking advantage of unknown property for new use, a device used in a new way to overcome practical difficulties.

What types of patents are there in Australia?

In Australia there are two types of patent – a standard patent and an innovation patent. They both afford the patent owner with the same exclusive rights while they are in force. However, there are a number of key differences:

  • Cost – An innovation patent is relatively inexpensive when compared with a standard patent.
  • Grant time – An innovation patent is much quicker to be granted than a standard patent.
  • Duration – A standard patent has a much longer term or life-span than an innovation patent, at 20 years rather than eight years.
  • Examination – An innovation patent does not need to be examined before grant, but it must be examined before you enforce your rights. A standard patent must be examined and accepted before grant.

Below is a snapshot of the differences between a standard patent and an innovation patent.

Standard patent Innovation patent
Duration 20 years Eight years
Requirements An ‘inventive step’ which must not be obvious to someone with knowledge and experience in the technological field An ‘innovative step’ which can be a development or feature which improves a product or device
Form Complete specification disclosing invention including description and any drawings, and unlimited claims Complete specification disclosing the invention including description and any drawings, and maximum five claims
Examination Substantive examination prior to patent grant No examination prior to patent grant. Optional examination after grant
Publication 18 months from first filing (priority) date On grant
Grant Up to four years after application filing Approximately one month after application filing
Certification After satisfactory examination
Enforcement After  grant After patent certification
Opposition Prior to patent grant After patent certification
Renewal From 4th anniversary of filing date and annually thereafter From 2nd anniversary of filing date and annually thereafter

Why would I want a patent?

A patent provides the owner with exclusive rights such as the right to stop others making, selling, importing, using or otherwise exploiting the patented invention in the country in which the patent is granted. These rights also mean the owner can fully capitalise on their invention while the patent remains registered (or in force). Without a patent, the inventor will have no legal right to stop another party using or exploiting the invention in any way.

For many organisations, an important reason for pursuing patent protection is to add value to the invention. Most investors, venture capitalists, prospective partners or licensees will want to know that patent protection is in place or being sought for an invention.

What is a patent attorney?

A patent attorney in Australia is a professional who holds a tertiary qualification in science or engineering, and is qualified and trained in laws relating to patents, trade marks and designs.They also have knowledge on the laws and practice relating to copyright practice, trade practices, circuit layouts, plant breeder’s rights and confidential information.  Patent attorneys are not lawyers, although they may hold a law degree. A number of patent attorneys are also qualified as lawyers.

Patent attorneys can:

  • Represent applicants in applying for and securing patents, trade mark registrations, industrial design registrations and plant breeder’s rights in Australia and overseas.
  • Determine whether a development is new and sufficiently inventive to support  patent protection.
  • Prepare patent specifications that are most relevant for your invention and technology.
  • Guide applicants through the patenting process, including preparation of essential documents and corresponding with Patent Offices.
  • Advise on all aspects relating to intellectual property (IP), including registration and maintenance.
  • Assist with technology transfers through licensing and other arrangements.
  • Conduct audits of  IP rights.
  • Assist with IP litigation in Australia and overseas.
  • Manage IP portfolios.
  • Advise on IP validity and infringement.

Why should I use a patent attorney?

A patent attorney has the skills and knowledge to guide you through all aspects of the patenting process, from drafting your application, to advising on international protection. Being technically and legally qualified, patent attorneys have the expertise to ensure your invention is effectively protected and enforceable in the countries where your invention may be exploited.

Inventors and patent applicants are entitled to prepare and handle their own patent applications. However, patent law and practice is both complex and onerous. As a result, there is a significant risk of applications handled by applicants themselves being rejected by the Patent Office or being unenforceable in the courts.

How do I mark my invention?

Marking your invention to indicate that it is patented or has a patent pending is not compulsory. However, marking can be a very useful way to alert others to the existence of a granted patent or a pending patent application and perhaps deter them from copying your invention. Marking your invention will also reduce the likelihood of others claiming that their infringement of the patent was innocent.

You can mark your invention by printing or otherwise applying the words ‘Patented’ or ‘Patent Pending’ to the actual product, associated packaging or other materials. You may also include the relevant patent or application numbers. It is an offence to use any marking that wrongly indicates that a product or process is patented or the subject of a patent application.

 When is an invention patentable?

To be patentable, an invention must meet certain criteria. In Australia, a standard patent requires the invention to be novel and inventive. For an innovation patent, the invention must be novel and innovative.

  • Novelty for both standard and innovation patents – The invention must be novel (new) when compared with any information made available through a published document or use, or other public disclosure anywhere in the world before the priority date of the patent application.
  • Inventive step for a standard patent – The invention must be inventive or ‘not obvious’ to another person with skills in the same technology.
  • Innovative step for an innovation patent – This is a lesser test than an inventive step. The invention must be different from prior public information (document or use) in a way that makes a substantial contribution to the way the invention works.

Can I tell someone else about my invention before filing an application?

The short answer is no. In most countries in order for an invention to be novel, there must have been no public disclosure of it anywhere in the world prior to the filing of a patent application.

Any non-confidential act that discloses all of the features of the invention, through documents, demonstration or through the sale of a sample of the product, before a patent application has been filed, could destroy the novelty of the invention, making it unpatentable. This may be the case even where the disclosure was only to a single person.

If you are unsure about the rules relating to disclosure, talk to one of our patent attorneys and we can advise on this important issue.