After years of toiling and developing something new, useful and innovative, you have been granted an innovation patent over your magnificent creation. Phew, big sigh of relief. But unfortunately, it does not end there. The granting of an innovation patent does not give you a legally enforceable right to the patent. For the innovation patent to be legally enforceable, you must have the patent examined by IP Australia.

Who can request examination?

You can request examination of your innovation patent, which requires you to pay the fee to examine the patent.

Alternatively, one of your competitors may require the examination of your innovation patent. They might do these in situations where they suspect that your invention infringes on a patent that they own. Where your competitor requests examination, they have to pay half the cost, and you have to pay the other half. If you decide not to pay, you could lose your innovation patent.

What can happen after the examination?

IP Australia is going to give you one of two responses after examination: successfully certified or failed to meet the requirements of the Patents Act.

Certification

If, following IP Australia’s examination of your innovation patent, it is approved, then you are the owner of a legally enforceable patent! You can enforce these rights against those who are infringing your patent.

On the flip side, once your innovation patent is certified, competitors may start their attack and try to take action to show that the patent is valid. Be prepared!

An adverse report

If IP Australia notifies you that your innovation patent does not meet the requirements of the Patents Act 1990, you will be issued with an adverse report. If someone else requested the examination of your innovation patent, they will also be issued with an adverse report.

You could be given an adverse report for many reasons including that the inventions are not adequately described in the application or that it isn’t clear how the invention is different from existing technologies.

The adverse report will include objections that you will need to overcome for your innovation patent to be certified. If you can overcome these objections within six months from the first adverse report, you will be able to have your innovation patent approved.

Sometimes the objections can be overcome by merely making changes to the descriptions or the claims. You can do this several times, as long as it is resolved within the six month period. Otherwise, you will lose your innovation patent.

Conclusion

While the threshold for obtaining an innovation patent is lower, and the application process less stringent, certain requirements must be met. Very often patent applications are knocked back because the description or claims are not accurate. You should get assistance from an intellectual property professional who can help you prepare an application that reflects your invention accurately and meets the requirements under Patent law.

Dhanu Eliezer

Next Steps

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