Without patent protection, your idea can be taken up by another and copied, potentially patented and profited from, leaving you with huge loss of opportunity. Obtaining patent protection is therefore of paramount importance to your invention’s marketing strategy.
Any public disclosure of your idea which is made before filing a patent application can potentially result in loss of the opportunity to patent it. However, in some countries including Australia, a ‘grace period’ is permitted. In situations where the consent of a nominated person is given (usually the applicant), public disclosure of an invention will not result in the invalidation of a subsequent patent application. The grace period in Australia allows 12 months from the time of disclosure to file a complete patent application, after which time the opportunity to patent the idea will be lost. Written confidentiality agreements are often used, with respect to, for example, employees, business partners or advisers, as measures to protect against unwarranted public disclosure.
Patent Advice 1: Patentable subject matter
IP Australia checks that the basic requirements of patentability are upheld, i.e. that the idea is new, inventive and useful:
- Novelty — the invention is novel in light of the prior art information
- Inventive step — the invention would not have been obvious to a person skilled in the relevant art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim
- Useful — the idea functions as described in the specification
These criteria are applicable to devices, substances, methods and processes as, generally, patentable subject matter, but artistic creations, mathematical models, plans or other purely mental and artistic processes are not patentable.
Patent Advice 2: Patent process
The filing of a provisional patent application with IP Australia is usually the first step in the process. It affords you protection for 12 months to further develop your invention or refine your patent specification, or otherwise, to consider the financial viability of your idea and therefore whether patent protection should be sought beyond this stage. Provisional patent applications can now also be filed online.
Your provisional application must consist of a patent specification in addition to forms detailing your application. The patent specification itself must provide a description of your invention and its characteristics. In addition claims are ideally also included to define the patent rights in respect to the idea. Thus, it is imperative that you draft your specification with enough information, and in such broad terms, that its full ambit can be utilised later down the track without fear of circumvention by copiers. A registered patent attorney is uniquely qualified to draft a specification in this manner, and is best able to use his or her skills to generate a broad set of claims.
Furthermore, a patent search is often performed to identify possible relevant prior art. The advice you obtain from this search will assist in determining the likelihood of a successful application and accordingly, what strategies you should employ for prosecution in later stages of the application process.
Lodging a complete application prior to the expiration of the 12 month deadline will advance you to the next stage. Failure to do so will result in a loss of priority. The complete application may consist of a complete national application with the relevant patent office.
Alternatively, in situations where multiple countries are sought for patent protection, a Patent Cooperation Treaty (PCT) international application can be filed with the World Intellectual Property Organisation (WIPO). The PCT application establishes a filing date in the 140 or so countries which are party to the PCT, wherein you can seek patent protection for those countries of your choosing. This involves the filing of “national phase applications” in each such country within approximately 30-31 months of the priority date.
A further option is to file a complete direct application in each country of your choosing without going through the PCT application process. This is particularly relevant if you are only seeking protection in a few countries.
Patent Advice 3: Patent Attorneys
Patent attorneys are uniquely qualified to represent patent applicants or patent holders, having been specifically trained to come up with ways in which an idea might be infringed, and accordingly, to develop specifications which protect against potential imitators.
An insightful patent attorney utilises both technical expertise and legal knowhow relating to IP to formulate a sufficiently broad and effective claim set for your invention, resulting in a specification capable of establishing a comprehensive monopoly over all possibilities relating to your idea in the future.
The following is a list of activities which can be performed by patent attorneys, from the Institute of Patent & Trade Mark Attorneys of Australia (IPTA) website:
- Provide intellectual property (IP) advice, including patent advice, and help IP owners register and maintain their property
- Apply for and secure patents, registered trademarks, industrial designs and plant variety types in Australia and overseas
- Help transfer technology by licensing and other processes
- Conduct IP audits of organisations and products
- Conduct litigation in Australia and overseas
- Determine whether a development is new and sufficiently inventive enough to justify a patent
- Determine the nature and ambit of inventions and prepare patent specifications
- Lodge documents with the Patent Office, and help applications through the process
Important Disclaimer: The information on this website is not legal or professional advice. The information may:
- not be correct;
- only relate to the law or practice in a given country; and/or
- be outdated.