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Note from 25 August 2021, the innovation patent will cease to exist. After this date, you can only file a divisional innovation patent if it is based on a previously filed patent. Read more about this change in our article.

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 examined the application process under PCT, a process aimed at easing the registration process for those who want to seek patent registration in multiple countries. This week, we will look examine patent opposition.

What is Opposition?

Patent opposition is a right created under the Patent Act permitting any person to raise issues against the grant of a patent. Oppositions can be made against an accepted standard patent application or a certified innovation patent.

What are the Grounds for Opposition?

A patent can only be opposed on the following grounds:

  • the nominated person in the patent application is either:
    • not entitled to a grant of patent for the invention; or
    • entitled to a grant of patent for the invention but only in conjunction with some other person.
  • that invention is not a patentable invention;
  • that the patent specification filed is not a complete specification

This means a patent application can be opposed for reasons that the patent:

  • is not new, inventive for a standard patent (innovative for a innovation patent);
  • is not useful: this is to ensure that patents are granted for subject matters that work and can be used, discouraging patents being filed purely for strategic reasons.
  • was secretly used in the patent area (i.e. Australia) before the Priority Date;
  • issues of patent specification: this is a disclosure requirement applicable to claims made which are not clear, succinct, supported by matters disclosed in the specification, and fail to satisfy disclosure requirements generally.

Please see our article on patentable subject matter for a discussion on what can or cannot be patented.

When can you File an Opposition?

To oppose a standard patent, you must file a notice of opposition within 3 months of IP Australia publishing a notice of acceptance for a patent application.

An innovation patent may be opposed any time after it is certified by IP Australia.

Please see part 6 and 7 of this series for information on standard and innovation patent filing processes.

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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