Patents

Public disclosures (e.g., disclosures to persons not under an obligation to keep an invention secret) before filing a first patent application covering the invention may eliminate any rights to patent protection in many jurisdictions around the world.

Some countries, including Australia, New Zealand, the U.S. and a handful of other countries, have a 12-month grace period whereby patent protection may still be obtained depending upon the circumstances surrounding the disclosure.  To claim the benefit of the grace period in Australia, a complete application must be filed within one year of the public disclosure.  In the U.S., the 12-month grace period is measured from the filing date of the earliest patent application that fully supports the claims of the application. However, any party taking definite steps to copy the invention during the grace period may have intervening rights and be protected against any infringement proceedings.

It is recommended that a patent landscape search be conducted prior to filing the first patent application to investigate whether there is related technology in the prior art base. It is to be noted that there is no guarantee that a search will identify all documents that may be relevant to the invention or cited against the patentability of the claims during examination of the patent application.

Note that the landscape search is not a search to investigate whether a commercial version of the invention will infringe another party’s granted patent.

An infringement search can be carried out in jurisdictions in which there is a concern that existing patents may be infringed. Thus, the searches are limited to particular jurisdictions and are not carried out over a wide range of jurisdictions as is the landscape search.

It is recommended that a provisional patent application be filed in the first instance to cover the invention.

A provisional patent application must meet statutory requirements of defining the invention and describing how to perform the invention. A provisional patent application is not examined or published, nor is it enforceable against a potential infringer. The filing date of the provisional patent application is important as it establishes a priority date for the invention. The priority date is the relevant date for assessing patentability of the invention. Any material that was publicly available before the priority date can be considered by an examiner for assessment of novelty and inventive step during examination of a later-filed patent application.

Further patent applications based on the provisional patent application must be filed within 12 months of the earliest priority date to claim the benefit of the priority date.

Complete patent applications are examined to obtain an enforceable granted patent. A complete patent application can be the first application filed for the invention. Alternatively, a complete application can claim priority from one or more earlier-filed patent applications such as a provisional patent application or an earlier-filed complete patent application. The term of a patent granted on a complete patent application is 20 years (extendable by 5 years for a pharmaceutical patent) from the filing date. Annual renewal fees must be paid to keep a granted patent in force.

Generally, there are two options available for pursuing patent protection locally and overseas. It is important to note that it is not possible to obtain an international patent.

One option is to file individual patent applications in each country of interest. This may be a cost effective avenue where one or two countries are required. In this case, it will be necessary to comply with filing formalities in each of those countries. This could include providing translations of material to be filed and execution and filing of various forms.

Another option is to file an international application under the provisions of the Patent Co-operation Treaty (PCT). The PCT allows applicants to file a single application that designates a large number of countries, without the need to file directly in those countries. An international application effectively initiates an application in each of the countries that are a party to the PCT. However, it is still necessary to file the application in each of the countries in which a granted patent is required.

Once the international application is filed, a search and an examination is carried out. Examination is an opportunity to gauge how the application may proceed in the elected countries.

An innovation patent is only available for Australia. The innovation patent system was phased out on 25 August 2021. Here is a post from our Knowledge page in connection with the phasing out. It is no longer possible to file an application for an innovation patent, unless it is filed as a divisional application from an existing Australian patent application.

The innovation patent establishes a right that is at least as effective as that established by a standard patent, but which is significantly easier to obtain. This makes it particularly useful as an early enforcement tool.

Compliance with an “innovative step” is required. The requirement is met if the novelty-conferring feature of the invention makes a substantial contribution to the working of the invention. It is much easier to meet this requirement than it is to meet the inventive step requirement of a standard patent.

The innovation patent is granted shortly after the application is filed. The patent is published at the same time, so making the invention disclosure available to the public. This can be significant, since it will prevent withdrawal and re-filing while the invention is still novel. This can be done with a provisional application while the invention is still novel, in order to “extend” the 12 month deadline for filing further application/s based on the provisional application.

​An innovation patent has a life of 8 years from the date of filing the patent application. Only 5 claims are permitted for an innovation patent.

A patent applicant can be the inventor(s) or an entity that has acquired the rights in and to the invention from the inventor(s). Those rights may be acquired by an agreement, such as an employment contract or a deed of assignment.

It is important to identify the person(s) who contributed to the conception of the invention. Such person(s) must be named as inventors.

Note that the applicant must be a natural person or a legal entity such as a registered company. It is not possible to file an application in the name of a trust. However, it can be filed in the name of a trustee, for example, a registered company set up as a trustee.

This is an important aspect of patent practice. Failure to identify the inventor(s) and applicant correctly could result in a granted patent being revoked.