What is a patent?

A patent can be granted for a new and useful invention relating any device, substance, method or process, e.g. what something is or the way it works.

A patent is time-limited monopoly that is granted to the owner of the invention that entitles the owner to stop others from exploiting the invention so that the owner shall have and be able to enjoy the whole profit and advantage to be derived from the invention.

The rights to exploit the invention include:

  •   making, hiring or selling
  •   offering to make, hire or sell
  •   using
  •   importing
  •   keeping, for any of the above purposes

Validity requirements

The requirements for a valid patent to be granted are specific to each country, but most countries do have similar requirements.  The three most important requirements are that:

The invention must be "new"

This is a factual test whereby the invention must not have been published (disclosed) anywhere in the world before the priority date of the patent application.  Note that even secret use is considered to be a novelty destroying disclosure.

Although some prior disclosures may be excused and a few countries (such as Australia and USA) do offer a grace period for prior disclosure, each case will need to be determined based on its own facts.  We will be able to advise you in each circumstance.

It is therefore preferable to file a patent application before any non-confidential disclosure of the invention is made.  However, if you need to discuss the invention with business partners, request them to sign a non-disclosure agreement.

The invention must involve an "inventive step" or an "innovative step"

Australia provides for two types of patents, namely a standard patent requiring an inventive step or an innovation patent requiring an innovative step.

This test involves a more subjective interpretation whereby, for a standard patent, the invention must not have been obvious to a person skilled in the art of the particular technology, i.e. if the invention is merely an obvious adaptation of an existing product or process then there can be no inventive step.  

The difficulty in determining the presence an inventive step is often highlighted when the same patent application is prosecuted in different countries.  It may be that an examiner in one country will grant the patent, whereas an examiner in another country rejects the same patent application.  

With regard to innovation patents, this test is made slightly easier and merely requires that the invention makes a substantial contribution to the working of the invention.

The invention must be directed to suitable subject matter 

The invention must be able to be able to be made or used in industry.  This requirement is typically used to prevent patents from being granted for discoveries, mathematical formulas, laws of nature or works that would be protected by copyright.

Duration of protection

The maximum term of protection for a standard patent is twenty years calculated from the date that the complete patent application was filed.

In order to keep the standard patent in force, it is necessary to pay annual renewal fees from the 4th anniversary of the filing date - these are due even before grant while the application is still being examined.

The maximum term of protection for an innovation patent is 8 years calculated from the date that the complete patent application was filed.

In order to keep the innovation patent in force, it is necessary to pay annual renewal fees from the 2nd anniversary of the filing date.

Application procedure

Normally the first step is to file a 'provisional' patent application, which provides protection for an initial 12-month period.  The provisional application sets the priority date at which the validity requirements are tested and thus allows the invention to be disclosed or put into practice to determine if it is viable to continue.

At any stage during the following year, a 'complete' patent application can be filed claiming priority from the provisional patent application.  It is possible to add additional information to the patent specification when filing the complete patent application to include further developments made during the initial year.  The complete patent application can also be filed as a PCT international application.

Standard patent applications

The patent offices of most countries will examine the complete patent application to ensure it complies with the above validity requirements.  In some countries, such as the USA, the examination proceeds automatically, but in Australia it is necessary to formally request that examination be conducted.

If the examination is successful, the application will be published to provide third parties an opportunity to oppose the grant of the patent.  This will typically be done if the third parties know of additional prior art that may not have been available to or considered by the examiner.

The patent will be granted is no opposition is filed or if the opposition fails.

Innovation patents

An innovation patent application is not examined by the patent office before grant.  Rather the patent is granted after a mere formality check - normally within 1-2 months.

However, before a granted innovation patent can be legally enforced against third parties it must be examined and certified.  Should the examination fail, then the innovation patent will be revoked.