Watermark

The traditional philosophy behind the patent system is to grant such a monopoly right in exchange for disclosure to the public and industry of the technological developments described within the patent to thereby encourage and promote industry within Australia.

The monopoly right granted to the patent owner also helps to compensate both the inventor(s) and their employer(s) for the time, resources and capital expenditure invested during the development of the invention.

Why Should I Patent?

Patenting of an invention and thereafter proper management of the patent, can provide a sustainable commercial advantage over likely competitors. Failure to patent an invention may allow third parties (including competitors) to use your invention outside of your control. Such competitors who are allowed to copy the invention effectively a commercial springboard within the relevant industry without the considerable time, resources and cost associated with development of the invention. There is no legal recourse under patent law to prevent copying of an unpatented invention

What is a Patentable Invention?

In Australia, an invention must meet certain criteria to be considered patentable. The invention must be novel ie new, and inventive, and must belong to a field of economic endeavour (as opposed to the fine arts).

Commonplace patentable inventions are typically devices, and industrial or technical methods or processes. However, patentable inventions also extend, in Australia, to organisms, medical practices and procedures and life-forms (not human), provided they meet the criteria to be a patentable invention.

Not all "inventive" concepts lead to patentable inventions. Non-limiting examples of "inventions" not patentable in Australia are:

1. mere discovery of natural phenomena;
2. mere presentation of information;
3. creation of a mathematical formula per se without practical application;
4. perpetual motion machines; and
5. human beings

For an invention to be considered novel (new) in Australia, it must not, before the priority date of the patent application, have been previously:

1. published in a document anywhere in the world by any person; or
2. used anywhere in the world by any person.

A world wide novelty search is recommended to help establish whether or not the invention has previously been published. Watermark's experiences in house search team can carry out discreet and thorough searches in all major commercial patent and designs databases either prior to or after filing a patent application. Types of Patent Protection in Australia There are two types of patent currently available in Australia

1. Standard patent - maximum term 20 yrs with annual renewals payable from the 5th yr
2. Innovation patent - maximum term 8 yrs with annual renewals due from the 2nd yr

Whilst both patents require the invention to be novel, different levels of inventiveness or innovation are required. To be considered inventive for grant of a standard patent, an invention must provide an advantage or improvement over the known technical art that is beyond the everyday skill of a person considered skilled in the particular area of industry or technology. For certification of an innovation patent, the invention (innovation) requires a lower threshold than for standard patents, and must provide a substantial contribution to the working of the device, process etc (e.g. improved functionality) and not be merely be a known functional or aesthetic variation.

Examination

Most countries have patent offices which actively examine patent applications before granting them. Basically they keep 'patentees honest' by ensuring that the definitions of the invention define a non-obvious invention and would not cover products which could have been made without being inventive based on the information publicly available before the invention was made.

This means that the patents granted will have a reasonable presumption of validity. In Australia and the USA, about 80% of litigated patents are found to be valid.

The costs involved in the prosecution stage can be quite high, particularly in the USA where the examiners tend to take an adversarial approach rather than making a subjective fair assessment.

Although searching the prior art and careful preparation by the patent attorney can avoid expensive and prolonged examination, examiners will often cite new prior art which, although it can be distinguished, still must be considered. It must be remembered that a good patent examiner is employed to reject patent applications and therefore rejections should be anticipated. The examination procedure is like a sophisticated negotiation in which the patent attorney negotiates with the examiner the wording and scope of language the examiner will allow.

The examination procedure and timing varies from the USA, where no fees are paid and applications are examined within twelve months of filing, to the European or Japanese patent offices, where fees must be paid and delays are three to seven years.

When the patent is granted, the scope of the protection should be checked by comparing it to the products to be marketed and to the closest competitive products. This will provide reassurance of the value of the monopoly gained. If competitors cannot include a differentiating feature which influences buyer choice in their products because of the patent, it provides a clear advantage. Similarly, with process technology, if competitors cannot utilise a process step which saves cost and / or improves production yield or reliability, they are at a disadvantage.

Acceptance and Grant

All objections raised by an examiner must be overcome within 21 months from the date of the first examination report. Additional official response fees are payable with any response filed later than 12 months after the first report.

Once the application is accepted, third parties have an opportunity to oppose grant of the patent within a period of 3 months following publication of the acceptance in the official journal of patents. If unopposed, the patent proceeds to registration and grant of the deed of letters patent.

Basic patenting procedure in Australia

Patenting Outside of Australia

Australia is a member of the Paris Convention and Patent Cooperation Treaty (PCT).

Under the Paris Convention, it is possible to file a patent application in another member country of the Paris Convention within 12 months of the filing date of the first filed patent application. "Priority" is therefore said to be claimed from that earlier application.

Australia also has direct agreements with some non-Paris Convention countries allowing such countries to be recognised effectively as convention countries for the purposes of such priority claims.

Alternatively or in addition to a Convention application, a PCT international patent application can be filed, which can also claim the priority date of an earlier application if filed within 12 months of that earlier application.

Foreign Patent Applications

Foreign patent applications can usually claim the benefit of an earlier priority date if filed within 12 months of the filing date of the first filed Australian patent application.

Thus, any public disclosure (publication or use) of the invention made by the applicant between the priority date and the foreign application filing date will not be detrimental to the validity of a patent subsequently granted in that country.

Some countries are not Paris Convention countries and it is therefore not possible to rely on the 12 month Convention priority period. In the absence of any other reciprocal (bi-lateral) patent agreement between Australia and a particular country, it will be necessary to file patent applications at the time of filing your Australian provisional patent application, or at least before using or publishing your invention.

It is therefore strongly recommended that an assessment be made at an early stage as to the likely countries where patent protection is desired. This will enable a suitable patenting strategy, timeframe and costs to be put into place.

Aside of the few countries where priority cannot be claimed, there are two options for applying for foreign patents. The first option is to apply for a patent in each of the countries of interest, while the second option is to file an international (PCT) patent application. Of course, a combination of these options may suit depending on the chosen patenting strategy.

The International Patent Application

The PCT provides an administrative process whereby a single "international" patent application is recognised by all of the major industrialised countries, including the United States, Canada, Australia, Japan, China, and most countries in Europe. However, there are some countries that are not bound by this treaty.

The international patent application does not lead to the grant of a patent. As yet, an international or worldwide patent does not exist. The PCT process does provide certain benefits:

1. an international search report and an opinion on patentability of the invention
2. opportunity to make amendments
3. a report on patentability of the invention
4. opportunity to delay until 30/31 months (for most countries - there are some variations) from the priority date the deadline for entering into chosen designated countries:
   1. this can help delay the costs for "national" entry whilst in the meantime assessing and establishing markets for the invention, and
   2. allows an assessment of the viability of the invention to be made from the search and examination reports before such large costs are incurred

A current list of countries and regions party to the PCT agreement can be viewed on the WIPO website

Regional Patent Applications

Regional patent applications can be filed, both directly, or via a PCT international patent application.

There are four main regional patents available, which are the European patent, the Eurasian patent, and two African regional patents known as OAPI and ARIPO.

The particular countries covered by such regional patent applications are as follows:

European Patent
Albania, Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Monaco, Netherlands, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, United Kingdom

Eurasian Patent
Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russian Federation, Tajikistan, Turkmenistan

OAPI
a cooperative union of African countries comprising Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d'Ivoire (Ivory Coast), Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo

ARIPO
a cooperative union of African countries comprising The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia, Zimbabwe