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Australian Patent Application Process
The steps taken in a typical Australian patent application process are set out below. There are alternative steps that may be taken in some cases, however it is not practical to summarise all possible alternatives here. If you would like further information, please contact us.
1. Pre-filing Search
In some cases we suggest firstly conducting a search for prior publications to get an indication of whether an invention is new, and ascertain if you risk infringing others patents. However, the cost for conducting a search of published specifications and reporting to you often equates or exceeds the cost of filing a patent application. Further, most inventors know their chosen fields well and are mostly aware of what is already known in their field. Therefore, it depends on the particular case as to whether a pre-filing search is conducted. Please note that such a search is not definitive due to the large number of databases which are now available to be searched, and the potential that a relevant unpublished application may exist.
A useful website for checking whether an invention may be new is Google Patents (www.google.com/patents) which searches United States patents and published patent applications. However, as mentioned above, such a search is not definitive and will not locate patents filed in other countries, or other potentially relevant documents such as journal articles.
2. Australian Provisional Application
The first step for Australian inventors or companies in obtaining a patent is typically to file a provisional application at IP Australia. A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. The invention should be kept confidential until after the provisional specification has been filed in order to preserve the novelty of the invention.
As you might expect, the exact wording of the provisional specification has a direct bearing on the breadth of protection. For this reason we strongly suggest you allow us to draft the provisional specification on your behalf.
A provisional application serves to secure a "priority" filing date. Publications or use after the priority date will not destroy the novelty of your invention, provided that you take the next step within 12 months of filing.
Once a provisional is filed, you have 12 months to proceed with a complete application, and to file applications for protection in other countries.
3. Australian Complete Application
The next step in obtaining patent protection in Australia is to file a complete application at the IP Australia within 12 months of the provisional application.
An Australian complete application can be for a standard patent or an innovation patent.
3.1 Standard Patent
An application for a standard patent must include a complete specification. As with the provisional specification, the description must describe the invention in a manner clear enough and complete enough for the invention to be performed by the person skilled in the relevant art. In addition, the complete specification must disclose the best method known to the applicant of performing the invention and must end with an unlimited number of claims defining the invention.
The claims must be clear and succinct and be supported by the matter disclosed in the specification. It is these claims which define the scope of the monopoly.
An application for a standard patent will be examined for compliance with the Patents Act 1990. This process can take months to years depending on the circumstances. An invention claimed in a standard patent must be new, useful and involve an inventive step over the prior art.
If granted a standard patent provides protection for up to 20 years (25 years in the case of pharmaceuticals).
3.2 Innovation Patent
An application for an innovation patent must also be accompanied by a complete specification. The same requirements for the specification apply; however, the specification must only include 5 claims defining the invention.
An innovation patent is not examined prior to grant. Accordingly, an innovation patent can usually be granted within a month. However an innovation patent cannot be enforced until it has been certified. The certification process involves requesting examination of the innovation patent for compliance with the Patents Act 1990. Examination may be requested by you or a third party.
The invention claimed in an innovation patent must be new, useful and involve an innovative step over the prior art. The standard of “innovative step” is different to “inventive step” and is generally considered to be lower.
A granted innovation patent provides protection for up to 8 years.
4. Publication, Examination, Acceptance and Grant
4.1 Standard Patent
A standard application will be published 18 months from the earliest priority date and again at acceptance.
Examination of a standard application does not proceed automatically. It is necessary to request examination within five years of the date in which the application is filed. In reality IP Australia will usually issue a direction to request examination, at which time you will have two months to request examination or the application will lapse.
Once examination is requested, IP Australia will examine the application for compliance with the Patents Act 1990, including the requirements that the invention be new, useful and comprise an inventive step. If any objections are raised you will have 12 months to overcome the objections (if examination was requested after 15 April 2013).
Once any objections raised by an examiner are overcome, the application will proceed to acceptance.
Once the application is accepted there is a three month window for an interested party to oppose the grant of the application. Only a few patent applications are opposed each year and most proceed to grant after the three month period has expired. The application will proceed to grant if no opposition is filed.
4.2 Innovation Patent
An innovation patent is not substantively examined prior to grant, therefore grant usually occurs within 1 month of filing. Publication of the innovation patent occurs at grant.
However in order to enforce your patent you must request that the granted innovation patent be examined. Third parties, for example your competitors, may also request that your innovation patent be examined.
Once examination is requested IP Australia will examine the patent for compliance with the Patents Act 1990, including the requirements that the invention be new, useful and comprise an innovative step. You will have six months to overcome any objections raised. If there are no objections, or once all objections are overcome, the innovation patent will be certified and published again.
5. Continuation/Renewal Fees
5.1 Standard Patent
Continuation/renewal fees for a standard patent or standard patent application are due annually from the fourth anniversary of the date of filing of the complete application. These fees are payable whether or not the patent is granted.
5.2 Innovation Patent
Continuation/renewal fees for an innovation patent are due annually from the second anniversary of the date of filing of the complete application date.
Patent Applications in Other Countries
If you wish to seek patent protection overseas, a complete specification in each country or an application under the Patent Cooperation Treaty (PCT) with the World Intellectual Property Organisation (WIPO), must be filed within 12 months of the filing date of the first application for protection of the invention.
If a PCT application is filed, an international search and written opinion on the novelty and obviousness of your invention will be issued before a decision needs to be made about which countries to enter the national phase. A national phase filing is also required before 30/31 months from the priority date in each country for which you would like patent protection.
Updated June 2013
