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.
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 some 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, 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.
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.
- Defining Novelty – 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.
- The inventive step – The invention must be inventive or ‘not obvious’ to another person with skills in the same technology.
Can I tell someone else about my invention before filing an application?
The short answer is no. In most countries, 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, please talk to one of our patent attorneys.
What are the benefits of having a patent?
Whether you are an inventor, an engineer, a scientist, or just someone with a great idea, having a patent will help protect your invention and provide you with a competitive edge in the marketplace.
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.
As a patent owner, you can control the:
- manufacture of a patented product;
- use of a patented product or process;
- importation of a patented product; and
- importation of a product made by a patented process.
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.
An effective intellectual property strategy will cover more than just the filing of a patent application. Our aim is to make your experience in obtaining a patent easy and commercially rewarding. Whatever your technology, our specialist patent attorneys will work closely with you to ensure your commercial objectives are met and your IP is effectively protected.
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. All of our lawyers are also qualified patent attorneys – which is usually quite rare.
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.
Do I need to use a patent attorney?
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.
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.
What are the key elements of patent drafting?
Preparing a specification that effectively protects the most valuable parts of an invention, requires highly specialised training, expertise and drafting experience. Effective patent drafting must also comply with the requirements set out by the local patent office or it may be rejected. If the patent application is too specific or too broad in its description, it may not provide effective protection for the invention. No matter what your invention, it is important to draft an application that is both flexible and robust.
What is involved with filing a patent?
Patent filing is the process of formally applying for legal protection over an invention through a patent office. Once filed, the application establishes a priority date and allows the inventor or business to pursue exclusive rights to commercially exploit the invention for a defined period of time.
We take the time to understand your overarching IP protection strategy and business objectives before we prepare your patent application. This helps us to ensure your application achieves the most commercially successful outcome for you and your business.
We have extensive experience in filing patent applications, and can arrange filing directly in Australia, New Zealand and Papua New Guinea. We can also assist with patent filings in other countries through our network of trusted foreign attorney firms.
Is there a patent that provides protection across multiple countries?
No, there is no such thing as a global or world patent and registering a patent in Australia does not protect your invention in other countries.
If your goal is to market or manufacture your invention in other countries, you will need to apply for a patent in each country or region in which protection is required. If you don’t file a patent application in other countries of interest, you run the risk of another party using your invention and you have no legal right to oppose it.
International patent applications can be expensive, so it is important that careful consideration is given to whether international protection aligns with your overarching business strategy. If you decide to proceed, our attorneys can help with all aspects of international patent protection, including developing an international IP strategy and determining the most cost-effective options.
Below are the different options available for international protection:
- National patents in individual countries – International protection can be achieved by filing a separate patent application in each country or region of interest. This approach is more cost-effective if protection is only required in a small number of countries.
- International application under the Patent Cooperation Treaty (PCT) – Where protection is required in several countries, it is usually more cost-effective to initially file an international PCT patent application. By filing one international patent application, you can simultaneously seek protection for an invention in over 140 countries throughout the world. An international application may be filed in combination with separate national applications in those countries not covered by the international application.
How does POF manage patent prosecution?
Patent prosecution is the process of applying for and negotiating the grant of a patent with a patent office. Based on the particulars of your invention, we will assign the attorney or service team with the most relevant technical expertise and sector experience to handle your patent prosecution. Your attorney will guide you through the examination process and manage your application in all countries where protection is sought.
Our specialist patent attorneys manage patent portfolios on a global scale. We represent clients directly before the patent offices in Australia, New Zealand, Papua New Guinea and some Pacific Island nations. We can also prosecute applications in any other country through our network of trusted foreign attorney firms. We carefully select the foreign associate firm to handle your patent prosecution based on your specific technical area, objectives and budget.
Does a patent need renewing?
Yes. Maintaining your patent is just as important as your initial registration. If you allow your patent to lapse, you will lose your exclusive monopoly rights and open up your invention to be legitimately used by a competitor.
A standard patent in Australia lasts for a maximum of 20 years if the renewal fees are paid. Renewal fees must be paid at regular intervals throughout the 20 year term or the patent will cease to be in force.
Our team provide alerts for renewal dates in ample time to ensure deadlines are met and your patent remains protected. Our sophisticated, purpose-built database carefully monitors the progress of your patent, from the application filing, through processing, to grant, providing you with reminders throughout.
What are the benefits of patent searching?
Whether you are launching a new product, keeping tabs on a competitor, or you just want to know if your idea is new, patent and design searching is a great way to ensure your competitive advantage is secure.
IP research and searching services include patent, design and trade mark searching and watching. Our team also assist with IP management and reporting services.
Common search services we provide include:
- Novelty or patentability investigations – These are typically conducted by clients who believe they have an invention that may be patentable or a design that is new and registrable. The search will identify other patents (prior art) that a patent attorney can compare against the invention or design to assess if it is new (novel).
- Validity investigations – These generally start with an existing patent or design and look for prior art that may impact the validity of claims in that patent or assertion of a design being new.
- Infringement investigations – These start with a product and search for any existing patents or designs the product would (or may) infringe.
- Landscape searches – These are used to identify what research work is being done in a particular technology, and who is conducting it. It can also cover the developing and changing nature of designs. Such searches may assist with decisions about the direction future research and development should take.
- Name investigations – These are searches of patent or design literature conducted in specific names. Name searches are often conducted to determine whether a company has IP protection in relation to a particular product.
- Due diligence investigations – These are searches of IP portfolios to determine the current legal situation of the identified IP. They are often used in mergers, acquisitions, licensing arrangements or initial public offering matters.
- Documents provision – We provide copies of documents including patent specifications, human or machine translations of patent specifications, patent file histories, details of registered designs, journal articles, standards, and almost any document that is required by a client.
- Working of patents – In some cases, it is necessary to establish nominal working of patents. We can arrange the placement of suitably worded advertisements in Australian publications for the purposes of establishing this nominal working.
- Watches – These are regular, periodic watches of specific IP rights, competitors and technology fields to assist clients in keeping abreast of developments that may impact on their business.
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.
What happens if a patent is opposed, infringed or taken to court?
Patent rights can be tested and challenged at multiple points in their lifecycle. As a patent owner or competitor, it is important to understand the processes involved – from oppositions before grant, to infringement, and potential dispute resolution.
