Reading time: 3 minutes

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.

Webinars

Negative Online Reviews: What are the Legal Options?

Wednesday 22 September | 11:00 - 11:45am

Online
Negative or false online reviews of your business can be disheartening and damaging. Understand your legal rights and options with this free webinar.
Register Now

Australia’s Global Talent Visa: How to Attract Top Talent

Thursday 7 October | 11:00 - 11:45am

Online
Understand how to navigate Australia’s complex migration system to attract top overseas talent with our free webinar.
Register Now

5 Essential Contracts for your Online Business

Thursday 14 October | 11:00 - 11:45am

Online
Learn which key contracts will best protect your online business with our free webinar.
Register Now

Key Considerations When Buying a Business

Thursday 11 November | 11:00 - 11:45am

Online
Learn which questions to ask when buying a business to avoid legal and operational pitfalls, so you can hit the ground running. Join our free webinar.
Register Now

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.

The majority of our clients are LVConnect members. By becoming a member, you can stay ahead of legal issues while staying on top of costs. From just $119 per week, get all your contracts sorted, trade marks registered and questions answered by experienced business lawyers.

Learn more about LVConnect

Need Legal Help? Get a Free Fixed-Fee Quote

If you would like to receive a free fixed-fee quote or get in touch with our team, fill out the form below.

Our Awards

  • 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer