Allens

Patents

A patent is a valuable piece of commercial property that helps prevent your competitors copying your invention: we can help you at every step of the way towards getting one.

From searching, patent drafting and examination right through to portfolio management, Allens Patent & Trade Mark Attorneys offers you the full range of patent attorney services. Our patent attorneys are registered in both Australia and New Zealand, enabling us to service you directly in both countries. In other countries, we have close relationships with associates who assist with patent filing and prosecution overseas.

Our experience is broad, working closely with research and development teams to advise on every aspect of the patenting process. We'll help you identify Intellectual Property issues early - and that's absolutely critical to the successful protection and exploitation of your patent assets.

Allens Patent & Trade Mark Attorneys is fully equipped to manage your total patent needs, both in Australia and overseas. We offer not only technical excellence, but clear-cut commercial solutions.

For some information on the procedures involved to protect your IP, please see our application process pages.

Patent services

Whatever your patent registration requirements, our registered and trainee patent attorneys can help, whether it's

  • searching to establish patentability or freedom to use an invention;
  • drafting patent specifications;
  • filing patent applications;
  • responding to examination reports;
  • representing you in patent oppositions, as applicant or opponent;
  • paying maintenance fees and annuities;
  • managing your patent portfolio;
  • advising on patent infringement and validity;
  • auditing your Intellectual Property; and
  • advising appropriate screening protocols for inventive activity and infringement risk management.

Basic filing requirements

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):

  • the applicant's full name and address;
  • the inventor's names and addresses;
  • a copy of the patent specification with drawings (preferably in electronic format) and a verified translation of the specification if not in English; and
  • details of any convention priority claim.

If entering the national phase in Australia, the following information is required:

  • a copy of the published international specification;
  • a copy of any Article 19 amendments;
  • a copy of the International Preliminary Examination Report with any Article 34 amendments; and
  • a verified translation of the published specification and any amended pages if not in English.

Before the patent application will be accepted the following information is required:

  • details of how the applicant derived title from the inventor;
  • a certified copy of any priority application (note that this is not normally required for national phase entry); and
  • a verified translation of any priority application which is not in English (note that this is also required for national phase entry).

Taking your Intellectual Property further

Our patent attorney practice operates in constant contact with our associated law firm, Allens, to give you the best possible patent, technical and legal advice. Specialised patent lawyers at Allens can help you take your patents further both in commercialisation of your inventions and enforcement of your patents, as well as advising you in defending an infringement allegation or revoking a competitor's patent.

Considering challenging an Australian patent?

A significant issue that our clients regularly face is in relation to third party challenges to patent rights and knowing when to initiate, or how to defend, proceedings. Adopting the right strategy is critical to achieving your goals and improving your likelihood of prevailing in any third party challenge.

The following mechanisms are available for challenging a patent application or patent in Australia:

  • Third party observations This is an ex parte process in which a third party notifies IP Australia of prior art relevant to a pending application. The grounds are limited to novelty and inventive step, and the notice is supported by written submissions. We generally would recommend filing a section 27 notice in very limited circumstances, where there is a novelty-destroying document (as it is difficult to invalidate claims on the ground of lacking an inventive step on an ex parte basis), and on the basis that a narrowing claim amendment to restore novelty would also remove any potential commercial threat.
  • Re-examination This is also an ex parte process, which may be initiated at any time after acceptance (allowance) of a patent application, including after grant. The grounds for re-examination are broader than those available for third party observations, and include patentable subject matter, utility, support, sufficiency and clarity, in addition to novelty and inventive step. However, the outcome of re-examination largely depends on the Examiner's reading of the patent specification and any prior art documents, and the patent applicant will typically be given an opportunity to propose amendments to overcome any ground of invalidity. For this reason, we generally do not recommend re-examination unless there is a very strong case and it is likely that an amendment to restore validity would also remove any potential commercial risk the patent poses.
  • Opposition Australia has pre-grant inter partes opposition proceedings, involving expert evidence from each party in the form of declarations by persons skilled in the art, which are decided by a Delegate of the Commissioner of Patents following an oral hearing. A notice of opposition may be filed within three months of the date that acceptance (allowance) of the application is advertised in the Official Journal of Patents. Commencing opposition proceedings may be appropriate if you wish to invalidate one or more of the claims before grant of a patent, or if you wish to challenge the applicant's entitlement to the invention. An opposition to the grant of a patent is significantly cheaper than seeking revocation of a patent before the courts, and may be used as a cost-effective means to test the strength of the applicant's case, particularly for corresponding litigation or challenges in other jurisdictions.
  • Revocation This is an inter partes procedure in which a third party may apply to the Federal Court of Australia for an order revoking a patent at any time after grant until the patent expires. The likelihood of successfully challenging a patent on the basis of prior art is increased during revocation proceedings, particularly if inventive step is a primary ground, due to the availability of pre-trial discovery and the evidence and cross-examination of experts at trial. However, this must be balanced with the commercial imperatives and the considerable cost of revocation proceedings, compared with alternative options for challenging the patent before IP Australia.

In our experience, before commencing an action to challenge a patent, it is crucial to identify which mechanism best aligns with your circumstances and commercial goals, and to ensure that you have a clear strategy in place, to maximise the likelihood of successfully achieving those goals.

 

Filing patents in Australia. Filing patents in New Zealand. Filing Trade Marks in Australia. Filing trade marks in New Zealand.
Patent Attorneys. Trade Mark Attorneys. Intellectual Property law advice.

Our associated law firm Allens operates in alliance with Linklaters LLP.