Australia and New Zealand Patent Frequently Asked Questions
We offer new clients a free no-obligation initial consultation to discuss options for protecting intellectual property, and provide this Patent FAQ.
The answers provided are as general information only, and cannot be considered specific advice for any one scenario.
Please contact us to arrange your free initial consultation.
What is a Patent?
A patent is a government authority or license that confers a monopoly right to exclude all others from making, using, importing, exporting or selling an invention.
Can I patent software or a mobile phone application?
In order to be patented, software or a mobile app must generally meet three main criteria. At time of filing the features and functions for which you seek protection must be:
- Patent Eligible (not an abstract idea);
- Novel (new); and
- Inventive (Non-Obvious to someone skilled in the relevant area of technology).
The key to this answer is whether or not the subject matter of the claimed invention falls within the patentable subject matter. This must be assessed for each invention, and any decision will also depend on the jurisdiction where patent protection is sought.
Please contact us to arrange your free initial consultation.
What cannot be patented (patentable subject matter)?
Abstract ideas, mathematical formulas, physical law of nature, natural phenomena, naturally-occurring products, and printed matter are all considered non-patentable subject matter.
In some justifications, methods of medical treatment of humans is also excluded from patentable subject matter.
The patentability of computer implemented inventions is a hot and evolving topic in many jurisdictions. Generally, assessment typically balances on whether the claimed invention is considered abstract or technical in nature.
Do I need a Patent?
While a patent is not necessary for your business success, it is a primary means to exclude others from exploiting your invention without your authority.
A patent portfolio comprising a well drafted patent application(s) is the first step in protecting your inventions against exploitation by others. Your patent portfolio is a powerful commercial tool to secure a commercial monopoly over your competitors and increase the value of your business.
If you wish to be able to exclude others from exploiting your invention, a granted patent is a common starting point.
Do I need a Patent Search?
While there are many kinds of searches, most are concerned with either a novelty search or right to market search.
The novelty search looks for earlier published documents (prior art) that may anticipate and invention defined by the claims, or sometimes described in the specification, of a patent document. This type of searches typically undertaken when assessing registrability or validity or of a patent claim.
A right-to-market search looks for granted patents having claims that may prohibit exploitation (manufacture, export, import, sale or use) of a product or method in a jurisdiction. This is a specific search that must be conducted in relation to each jurisdiction where a product or method may be exploited.
Can I do my own patent search?
We often suggest potential client to use internet search engine sites (e.g. Google) or online patent repositories (e.g. IP Australia Auspat , WIPO Patent Scope , Free Patents Online ) to undertake a preliminary search of your invention.
Performing patent searches through internet search database requires the use of keyword searching, which is an art that requires experience to do well. As such, result and accuracy will vary with the experience of the searcher, the lack of relevant results may not imply novelty or a freedom-to-operate. However, results containing relevant patent documents can be an early indicator of concerns or assist in determining an appropriate course of action.
What is the process of registering a patent?
There is no one way to reach the goal of a registered patent. However, there are two common processes.
Using the Paris Convention – typically a provisional application is first filed, leading to separate patent applications filed in each country/region of interest within 12-months. Each application is then examined, amended to overcome objections, accepted and registered.
Using the Patent Co-operation Treaty (PCT) – typically a provisional application is first filed, leading to a PCT applications filed within 12-months. The PCT application is examined, with amendments optionally filed to overcome objections. Separate national phase patent applications must then be filed in each country/region of interest within 30/31-months of the provisional filing date. Each application is then examined, amended to overcome objections, accepted and registered.
What is a provisional patent application?
A provisional application is typically the first step in obtaining a patent application, and can reserve patent rights for any invention disclosed in the specification.
It is recommended to have a provisional (or complete) patent application filed before any public disclosure of your invention. While “grace period” provisions exist to cover early publication by an inventor, these are not available in all jurisdictions or in all circumstances.
It is essential to understand that the provisional application has the same disclosure requirements as a formal complete application. An improperly prepared provisional application will provide little support for any later filed complete application, leading to potential invalidity through prior publication before the complete application is filed.
What is an Australian innovation patent?
This patent type is currently under review, with indication it will be removed in due course, but is still available for the time being.
An innovation patent is a shorter-term patent (8 years from the filing date), which can typically be granted within 4 weeks of lodgement upon requirement of formalities examination only. However, an innovation patent must be examined and certified before it can be used against an alleged infringer, requiring the innovation to be novel and involve an “innovative step”.
While we generally recommend the use of standard patent applications where possible, this patent type is worth considering if you require a cost effective early granted patent and/or strong enforceable rights against a potential infringer.
How long will it take to patent my invention?
While the time for obtaining a registered patent is dependent on the jurisdiction and technology involved, the timeframe for prosecution (filing, examination, amendments to overcome objections, acceptance and registration) typically falls within the period of 2-5 years.
Some jurisdictions allow for expedited examination under certain circumstances.
What does ‘Patent Pending’ mean?
“Patent Pending” is typically used when you have a pending patent application filed, and is typically displayed on relevant products or packaging.
Is there are an international patent application?
While a PCT application is commonly called an international patent application, it still requires filing of national or regional patent applications within 30 (or 31) months in each jurisdiction that protection is sought.
It must also be noted that some countries are not a party to the Patent Co-operation Treaty (PCT), which must be considered when filing a PCT application.
Should I file a PCT application?
This option typically depends on your commercial strategy and budget. If you are only considering pursuing patent protection in one or two jurisdictions, it is typically more cost-effective to circumvent the PCT application and directly file in those jurisdictions. However, if a decision cannot be made on relevant jurisdictions, or you merely wish to maintain options in your commercial strategy, a PCT application maintains your rights to enter in over 150 contracting countries or regions.
In many situations, a PCT application is seen as an effective commercial tool for maintaining your patent rights while postponing the significant investments required for multiple national patent applications.
What does it cost to patent an invention in Australia?
This is a very difficult question to answer, and is very much dependent on the particulars of the invention and application.
Further information is available on the patent cost page.
What response is required for a cease and desist letter?
A cease and desist letter may be either a nuisance, a serious threat to your business, or something in between.
Where a comparison of your product and the patent that has allegedly been infringed reveals no legal liability on your part, it is important to respond to the sender with a clear explanation of why their letter has been sent in error.
Even if there is potential infringement, it is important to fully evaluate your options up front in order to minimise the cost and reach a resolution as quickly as possible. There may be arguments that the patent is invalid, or a solution may reside in offering a reasonable license fee.
Patentable can help evaluate your best course of action, and offers a free no-obligation initial consultation.
Do I need a patent attorney?
An inventor can file and prosecute a patent application for their own invention, without a requirement to engage a patent attorney.
However, preparing and prosecuting a useful patent application requires an understanding of: the legal principles; the patent office rules and regulations; and the technical subject matter relating to the patent.
Engaging a Patent Attorney allows an inventor to combine their technical expertise with the patent attorney’s legal expertise and experience. Engaging a patent attorney when preparing and filing a patent application can avoid many pitfalls, and should also be considered as a commercial decision based on the expected value of the intellectual property protection being sought.
How do I find a Patent Attorney?
A patent attorney must have excellent technical and analytical skill that are suited to understand your inventions, such that they may provide suitable strategies for protecting those inventions. A patent attorney must also understand your business objectives, and possess the skills to communicate clear advice.
You must feel comfortable that the patent attorney you engage understands both your invention and business objectives, and can communicate their advice in language that makes sense to you.
Patentable offers a free no-obligation initial consultation so we can get to know you and you can ask questions about us.
We are a full service patent and trademark attorney firm that listens to our clients and offers relevant services for meeting their needs and budget. We are capable of protecting your intellectual property around the world.
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Sydney – Parramatta – Penrith
Greater Western Sydney
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