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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 who is eligible to apply for a patent. This week, we will look at the application process for standard patents.
The Application Process For Standard Patents
The key steps in the application process are:
- Conduct a search: This establishes whether any Prior Art Base exists which can affect the novelty or inventiveness of your application. See our article on conducting a search for more information.
- File an application: You must file an application accompanied by a patent specification. Once you file your application, it is checked and published. For a standard patent, the application is published in the official journal before examination. Here your application is protected for 18 months (even if examination has not occurred). If you hold a provisional patent, you must file for a standard patent within 12 months of filing your provisional patent to avoid losing your Priority Date.
- Request examination: Unlike the trade mark application process, examination of patents is not automatic. It must be requested and you must make a request within 5 years of lodging an application.
- Examination report issued: During the course of examination, the patent examiner will look at the specification(s) in your application and examine your invention to see whether it meets the requirements. You can expect an examination report usually within 12 months.
- After examination: The examiner will either issue an adverse report or a notice of acceptance. If you receive a notice of acceptance, you have up to 12 months for your application to be accepted. If an adverse report is issued, you have 21 months to file a response and make changes to your patent application in order to overcome the objections in the report. In response to such changes, further adverse reports may be issued until you have overcome all objections. Your application will lapse if you do not file a response, or address all issues in the adverse report, within 21 months from the first adverse report.
- Before grant of patent: After acceptance and before the patent is granted, third parties have three months to oppose the grant of patent. If no opposition is filed, a patent will be granted to you at the end of this three months period.
- Maintaining your patent: You must pay an annual fee to maintain your patent. Although a grant of patent provides strong monopoly protection, its protection is limited to a 20-year period (up to 25 years for pharmaceutical patents).
The total time from filing an application to grant of patent can take up to 8 years for a successful patent application. Note that fees are also payable at different stages of the patent process.
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.
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