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A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, it is a registrable right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret.

Over the coming weeks, we will explore the topic of patents and its application process in Australia. Last week, we explored different types of patents. This week, we will look at why it is important to conduct a patent search before applying for a patent.

Conduct a Search

In assessing whether a patent should be granted, the patent examiner will look at how the Invention differs from existing technology by comparing that Invention with the Prior Art Base. Under Schedule 1 of the Patent Act, this is a crucial step for novelty, and both inventive and innovative step.

Prior Art Base is not geographically prescribed and can refer to information publicly available anywhere in the world. It includes information that has been filed, but not published at time of a patent application’s Priority Date. This means Prior Art Base includes but is not limited to existing patents and patent applications.

A search can also help you:

  • determine whether you are infringing another person’s intellectual property;
  • determine if there are any security interests (such as a mortgage) over a patent; and
  • conduct market analysis on other intellectual property or competitor products.

You can use the following systems to search for patents:

  • AusPat: IP Australia’s patent search system for registered patents and pending patent applications in Australia;
  • PATENTSCOPE: WIPO’s search system allowing you to search patent documents from 39 national (or regional) offices including Eurasion Patent Office and the national patent collections of Canada, Germany and Portugal. The system contains published PCT applications and includes over 46 million patent documents.

Effective use of these databases is not a simple or straightforward task. It is prudent to engage a patent attorney or other IP professionals to aid you in the search.

International Type Search

If you have filed a PCT application with IP Australia, you can request an international type search conducted by one of the 18 functioning international searching authorities (ISA). The search will identify the Prior Art relevant to the patentability of the invention, establish an international search report, and provide a written opinion on the Invention’s potential patentability. This is subject to additional fees payable with your request for an international type search.

Conclusion

There are different avenues and methods to protecting your invention, and securing a patent is one of them. Unfortunately, securing a patent is not a simple or straightforward process. This process can be more complex and lengthy if you are looking to secure your patent in multiple jurisdictions. Our team of IP lawyers and patent attorneys have extensive experience in this area and would be happy to assist with protecting your invention. To speak with a member of our team today, contact LegalVision on 1300 544 755.

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