Are you thinking of filing for a patent but don’t know where to begin? LegalVision may be able to help.

Who can file a patent?

Any person may apply for a patent but a patent may only be granted to a person who:

  •  is the inventor;
  • would be entitled to have the patent assigned to them;
  • derives title to the invention; or
  •  is the legal representative of a deceased person who falls into one of the above categories.

Joint applications may also be made and a patent may be held jointly. Your application must consist of a patent request and such other documents as are prescribed.

Processing and Publication stage

Once a complete application is filed it will be subjected to a preliminary formalities examination, and it will be published in the Australian Official Journal of Patents. Eighteen months from the earliest priority date, the specification will be “laid open for public inspection” by publication in the Official Journal.

Examination

Now that your complete specification has been published on the Official Journal, anyone can request an examination of the application. The Patent Examiner undergoes the examination and reports on whether the application and specification comply with the Act’s requirements. This includes the following 4 factors:

  • Manner of Manufacture: which is the production of some commercial product or improves the condition of the product or preserves the commercial product from deterioration. For example, plants and animals are patentable whereas schemes and discoveries/ideas are not.
  • Novelty: asks whether the invention has already been disclosed by comparing information that was publicly available prior to your application.
  • Inventive Step: means an exercise of breaking new ground. It must not be obvious to a person skilled in the relevant art in light of the common general knowledge. In other words, it cannot not be the ‘textbook’ method of producing your invention
  • Utility: the invention must be useful. Here, the examiner asks whether it is practically useful. If someone followed the instructions, will the product do what you promised it would do?

Acceptance

If the Commissioner is satisfied that there is no lawful ground of objection, the application and complete specification will be accepted. Acceptance must occur usually 21 months from the applicant receiving the first Examiner’s report. The acceptance is advertised in the Official Journal and other documents related to the application become open to public inspection, if they have not already publicly available.

Conclusion

In summary, there are 4 main stages that you must navigate in order to succeed in filing a Patent. They are: whether you are eligible to file for a patent; preliminary processing and publication; examination; and acceptance/or rejection. As you may have gathered, filing for a Patent can be a complicated and technical process so it is strongly recommended that you seek legal advice before you apply.

If you would like to discuss your situation with one of our specialist IP lawyers, please complete the form or give us a call. We will then assess your needs free of charge and provide you with a fixed-fee quote if appropriate.

Lachlan McKnight

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