 |
||||||||||
|
||||||||||
|
||||||||||
|
|
|
 |
|
|
|
|||||
 |
|
|
|
|
|
Frequently asked questionsHere are the questions we are most frequently asked about patents - and answers to them.
If you any queries regarding the answer to these questions, our patents team would be happy to assist you - email contactus@aar.com.au.
1. How can I protect my new invention?(1) Keep it secret! Inventions can be protected by letters patent, or by the law protecting trade secrets. In either case, it is imperative that you keep your invention secret until you have decided how you will protect it. This means that you do not tell anyone about your invention unless they are bound to keep it secret for you - for example, by signing a confidentiality agreement. If you disclose your invention to someone who is not obliged to keep it confidential, a patent granted for the invention will be invalid. Further, the law of trade secrets does not protect inventions which are not secret. (2) Talk to a patent attorney Talk to a patent attorney (or someone with equivalent knowledge) about the best route to protect your invention - patent attorneys are obliged to keep your inventions secret. They can discuss your invention with you and advise you whether to apply for a patent or rely on the law protecting trade secrets.
2. What is a patent?A patent is a monopoly granted by the Commonwealth for a period of up to 20 years. It provides an enforceable legal right to prevent others from exploiting an invention. In order to secure patent protection, you first need to file a patent application with IP Australia, the federal authority responsible for processing patent applications and maintaining the Australian register of patents. The invention is described in words (and drawings, if possible) in a document referred to as a patent "specification", filed as part of the application. Note that a patent is not a reward for inventiveness; it's a bargain between the inventor and the Commonwealth whereby the Commonwealth grants a limited statutory monopoly, in return for the inventor disclosing the invention and how it works. After the patent expires or lapses, anyone can then use the invention. A patent is a commercial tool that can be exploited, and can be a very valuable asset for you, since it can preserve or create market share, or provide you with a basis for charging a premium price for a superior, differentiated product.
3. What is patentable?Not all inventions can be patented. To be patentable, an invention must satisfy certain criteria. For example, it must
The only present statutory exclusion from patentability in Australia is the patenting of human beings and the biological processes for their generation. Accordingly, a vast range of products and processes can be protected by patents, including pharmaceutical products, chemical processes and all manner of mechanical, electrical and electronic devices. Speak to a patent attorney, who advise you whether your invention can be patented, and offer you guidance on searches for prior disclosures.
4. Should I conduct any searches?(1) Searches regarding patent validity Searching technical and patent literature can help you decide whether your invention is novel and inventive. It's generally advisable to conduct searches as early as possible in a project, to avoid spending your time and money re-inventing a known product. You can carry out searches for other reasons, too - to obtain information about the state-of-the-art in a particular technology, for instance, or to learn about what your competitors are up to. Patent attorneys, who have access to a myriad online databases, most of which are subscription only, can help devise your search strategy, decide appropriate timing for a search and execute it. (2) Infringement searches Patent infringement occurs when an unauthorised person does something that falls within a patentee's monopoly, and it's not at all uncommon for this to trigger legal action. You can search patent registers to find patents that could be infringed. Infringement searches are country-specific, so it's necessary to have some idea of where the relevant activities will take place, to identify which national patent databases need to be searched. It is crucial this search is done before you invest in commercialising an invention: being drawn into legal action for infringement can be extremely costly, both in time and money.
5. What is a "priority date"?Filing of the first patent application sets a "priority date," the date at which the novelty or inventive/innovative step of the invention is compared with prior public disclosures (see Q10).
6. What is a "provisional patent application," what is a "complete patent application" - and what's the difference?A "provisional patent application" is often the first application filed in respect of an invention, and usually includes a broad description of the concept. Since it lapses 12 months after filing, if you want to continue seeking patent protection, you must file a complete application within this period. Compared with the provisional application, the "complete patent application" usually includes a more detail description of the invention, and the best method of making the invention work. In Australia, a complete application may be a standard patent application or an innovation patent application (see Q7). Complete patent applications may also be filed in individual foreign countries, or in respect of an international patent application or a regional one (see Q12).
7. What types of patent protection are there in Australia?There are two: (1) Standard patents An Australian standard patent has a maximum term of 20 years, and there's no limit to the number of claims. To be valid, and thus enforceable, there are some criteria a standard patent must satisfy, including complete disclosure of a patentable invention and the best method of performing it. (2) Innovation patents An Australian innovation patent has a maximum term of eight years, and is limited to five claims. Innovation patents are suitable for inventions with a short life, or which are technologically simple. Further, there is a lower threshold of patentability, since the invention need only contain an innovative step when compared with the prior art.
8. How long does it take for a patent to be granted in Australia?(1) Standard patent applications Once the patent application is filed, patent examiners of IP Australia examine it to check it meets all formal requirements, and consider the invention's patentability. If they have objections, they issue reports. The applicant or their patent attorney can respond to the examination reports with argument and amendments to the patent specification to try to overturn the objections. If all objections are overcome, the patent is granted. The whole process typically takes at least two years. (2) Innovation patent applications The innovation patent system was introduced to provide quick and efficient grant of a patent. Consequently, IP Australia only carries out formality checks before grant of an innovation patent. Accordingly, you can get an innovation patent within six months of applying. Note: to enforce an innovation patent against an infringer, you need to request IP Australia to carry out examination of an innovation patent.
9. When can I use "patent pending" on my goods?If you've filed a provisional patent application (see Q6), you can use the term "patent application filed"; once you've filed a complete application, you can use the term "patent pending". Only when you've actually been granted a patent can you say "Australian patent number xxxxxx".
10. What is the Paris Convention and what does it have to do with priority dates?In Australia, your complete application can claim the priority date of an earlier, Australian patent application for the same invention (usually the earlier application is a provisional one), provided certain criteria are met. The earlier patent application, for example, has to be the first one for the relevant invention, and the complete application has to be filed within 12 months. This right to claim priority from an earlier patent application is not uniquely Australian, but extends internationally by virtue of the Paris Convention, an international treaty signed by more than 160 member countries including Australia, the US, the UK and New Zealand. Each member country recognises a claim to priority based on an earlier application in another. For example, you could file a provisional patent application in Australia, then within 12 months file corresponding complete patent applications in Australia, the UK, the US and New Zealand, each of the four complete patent applications claiming priority from the Australian provisional one.
11. How do I get a World Patent?There's no such thing: you must secure patent protection country by country.
12. If I cannot get a World Patent, how do I protect my invention overseas?Virtually every country in the world has a patent system, and you can file separate national patent applications in countries of interest. But this can be very complicated if there is a large market for your invention and you need patents protection in lots of countries. Fortunately, international conventions make it easier by providing for the filing of complete applications covering regions, or groups of countries. (1) Regional applications In Europe, you can file a single complete patent application. The European patent office examines your application, and if it is allowed to proceed, you then have to ratify the European patent at the patent office in each European country of interest. Other groups of countries for which you can file a single patent application include countries in the southern region of Africa, the mid- to northern region of Africa and central America. (2) International application You can also file a single international patent application designating over 100 countries and regions (including Europe). The international patent application system exists by virtue of the Patent Cooperation Treaty, often referred to as PCT, and only countries/regions that have signed it can be designated in the International application. Most major economic powers can be designated, including Europe, the US, China and Japan. The international patent application constitutes a single application for up to 30 or 31 months from the priority date; it then branches, however, into separate national or regional applications. Although the cost of each national patent application varies, an international patent application is usually worth considering if you plan to secure patent protection in more than about four or five countries. A patent attorney can help you develop the most cost-efficient strategy, and tell you how much securing patent protection overseas is likely to cost.
13. Are there any ongoing costs after the patent is granted?In Australia you have to pay annual fees starting on the fifth anniversary of filing the complete patent application. While your patent application is in progress, these are called continuation fees; after grant, they're renewal fees. If you don't pay fees when they fall due, your patent application or patent lapses. In some circumstances, you can revive a patent application or patent that has lapsed because a fee was not paid. You should seek advice from a patent attorney immediately if you have any concern that your patent or patent application may have lapsed.
14. What if someone uses my patented invention?Patent infringement occurs when an unauthorised person does something that falls within a patentee's monopoly, a monopoly set out in the claims part of the patent specification. If you suspect an infringement, you must seek the advice of a patent attorney or Intellectual Property legal practitioner immediately. In particular, seek advice before approaching or communicating your infringement concerns to a suspected infringer. Some types of communication can jeopardise the possibility of successful legal action against an infringer, or may even leave you open to being sued yourself, particularly if your suspicions of infringement turn out to be unfounded. A patent attorney or Intellectual Property legal practitioner can advise you whether your infringement concerns are well-founded and recommend the next steps you should take. See: Patents: Enforcement
15. How can I make money from my invention?While you can sell or licence an unpatented idea for an invention, potential buyers or licensees may prove reluctant to invest in your invention because of concerns that others could copy it with impunity. In general, it is easier to sell or licence your patent, because it provides a well-defined monopoly and a legal right to pursue infringers. A patent, like any other piece of property, can be sold, assigned or licensed. As such, it is a valuable commercial asset, just like a piece of plant machinery or a building. See: Patents: Commercialisation
16. What are the filing requirements for Australian patent applications?In Australia, no power of attorney or authorisation of agent form is required. The following information is required to file a patent application in Australia ( which is not a national phase entry):
If entering the national phase in Australia, the following information is required:
Before the patent application will be accepted the following information is required:
17. What is the "duty of disclosure" in Australia and what do I need to do?The "duty of disclosure" is intended to make Australian patents more robust, by ensuring that relevant prior published documents known to applicants are considered by the Patent Office during examination of patent applications. The obligation to provide search results starts when examination is requested and extends until the patent is granted. Under this obligation, it is necessary to notify the Patent Office of the results of searches carried out by or on behalf of patent offices of foreign countries during prosecution of corresponding applications in those countries. It is only necessary to provide the Patent Office with a list of the search results (eg in the form of a search or examination report - there is no need to provide a copy of each document. There are severe penalties if an applicant fails to disclose relevant information. In particular, the issued patent cannot be subsequently amended if the effect of this amendment would be to remove a ground of objection based on a document that should have been notified to the Patent Office. If you require further information on the duty of disclosure, please contact one of our patent attorneys.
18. What rights do Federal and State authorities have to exploit patents?Federal authorities have the power to acquire patents under the Constitution but will be required to compensate the patentee. Federal and State authorities (including any person authorised in writing by a Federal or State authority) may exploit a patent without authorisation from the patentee if it is for the services of the Commonwealth or a State. The patentee is entitled to compensation for any such exploitation of its patent.
19. What happens if a patentee does not work a patented invention?There is no obligation for a patentee to work its patented invention. However, in certain circumstances, if a patentee does not work a patented invention, a compulsory licence may be granted against the patentee. In some cases, the patent may be revoked two years after the grant of a compulsory licence. These provisions exist to prevent patentees from using the patent system in a manner which is contrary to the purpose of the patent system.
A patentee may defend itself against an application for a compulsory licences if a satisfactory reason can be provided for failing to exploit the patent, such as circumstances outside the control of the patentee.
20. What are "compulsory licences" and what is required to obtain one?A compulsory licence is a licence to work a patented invention which is granted by the court in certain circumstances. Before applying to the court for a compulsory licence, the applicant must be able to establish the following:
Where the patentee's actions or omissions will unfairly prejudice existing or developing trades or industries, or where the patented invention is capable of but is not being worked in Australia on a commercial scale, the requirements of the public will not have been met. Compulsory licences are non-exclusive and may only be assigned with the enterprise or goodwill associated with the licence's use. The terms of the licence will provide for compensation to the patentee.
|
 |
 |
 |
|
|
|
|
|
|
|
|
 |
|
|
|
|
|
|
|
|
|
top of page