All You Need To Know Before You File A Patent Application

Provided you are working with a good patent attorney, patenting a new idea or innovation in Australia (and internationally if you choose), will generally be a fuss-free undertaking for you. However, making sure you receive expert advice from the outset is key, because the rights you are seeking depend on a high level of precision and expertise every step of the way.

Patent process

The journey to obtaining a patent can take up to two years, however, in some cases it can be significantly shorter. In some cases, if your application is for a standard patent, you will be required to request examination within five years of your filing date.

The first task is to undertake a comprehensive search of the register so that you are aware of any existing IP rights that might conflict with yours. This search ensures that you are conscious of, and prepared for any obstacles from the outset, and that you are able to adjust your strategy to ensure success. At Platform IP searches are managed in-house by our expert searchers, making it a cost-effective and streamlined process for our clients.

Once searches are completed, working closely with you, the patent attorney will draft your application, and then file it at the patent office. Drafting your application is an exacting process that involves a high degree of specialised training, expertise and experience. Your future rights and opportunities depend on getting it just right, right from the beginning.

Once the application is filed, the patent office will assess whether it conforms with all legislative requirements. This process can take well over a year, however, it can also be fast-tracked in some circumstances.

Is my idea patentable?

To patent your idea, there are a number of elements you need to satisfy.

Patentable subject matter

There are certain inventions that cannot be patented, including things like abstract intellectual concepts, plans and theories. However, the list of patentable inventions is extremely comprehensive. To ascertain whether your idea is ‘patentable subject matter’, you just need make an appointment with one of our patent attorneys, bring us in a well-defined description of your innovation, and we will provide clear advice on whether it falls within patentable subject matter.

Novelty

It is not possible to patent an idea that already exists or is publicly known. This is why it is crucial that you do not disclose information relating to your product – once it is known, your opportunity to patent is gone. Under Section 18(1)(b)(i) of the Patents Act,

Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel…

Novelty criteria must be met in order to establish that the innovation has not already been in the public domain. Novelty is likely to be lost even if information relating to the innovation has been made available only to a very small number of people, or published in a highly obscure publication: Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd. Further, what is considered the public domain is not limited to national borders, so publication or discussion outside your jurisdiction will also damage your ability to patent.

While a grace exemption period may apply (see page 22), it is clear that any disclosure at all will place you at considerable risk. Accordingly, if it does become necessary to disclose your idea for any reason, it is imperative that you ensure that you speak to an IP professional first, and have in place a sound confidentiality agreement to protect yourself, and maintain your ability to patent.

Prior use

Given the strict requirements around placing information into the public domain, it follows that if you have already been selling the product (or if someone else has), or you have previously used the process in your enterprise, it will not be patentable.

To safeguard your innovation, contact an IP professional at Platform IP now, before disclosing any information relating to your innovation. We can help you manage this process safely, protecting your future ability to patent, and maintaining the commercial value of your innovation.

Inventive

Whether a patent is inventive turns upon whether or not the idea would be ‘obvious’ to a skilled person. In deciding whether or not it is inventive, the examiner does not apply a strict formula. Rather, it is legal assessment that attempts to strike a balance between the predictability of outcomes, and the adaptability to consider principles.

Under the Section 7(2) of the Patents Act, an invention will involve an ‘inventive step’ in comparison to the prior art base unless it “would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).”

According to subsection (3) information is (a) any single piecer of prior art information; or (b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

Utility

When assessing a product’s utility, we are not looking at usefulness in the everyday sense. What we must ascertain is that there is a specific, substantial and credible use for the innovation.

Ascertaining whether or not your idea meets these requirements is not a simple process. It requires the skill and expertise of a experienced patent attorney who is highly knowledgeable on evolving case law and legislative conditions.

Contact us now for a fee 20 minute initial consultation

Why patent?

Increase your potential to earn

If you have a new idea, obtaining a patent is your pathway to greater returns for a whole host of reasons.

Enjoy a monopoly

As a patent owner you secure a monopoly, and as such are able to reap the multiple benefits of doing business competition-free.

Owning a patent can also enable your enterprise to run at a higher profit margin. This is because patented products usually have a higher sale price; as the patent holder has a monopoly, they therefore have greater freedom to set a selling price that is more beneficial to their bottom line.

Selling or licensing your patent

While filed patent applications do not generate income in and of themselves, they can be commercialised to leverage more earnings for your enterprise.

You can commercialise your patent by selling it for a one-off sum, or you may license the patent application in exchange for ongoing royalties. In some circumstances you can even utilise a combination of these two options.

Which patent application is for me?

In Australia, there are four principal patent application types:

• The Australian Provisional Patent Application – with a 12-month duration, this option is reasonably inexpensive, and allows for additional invention developments to be incorporated at a later date
• The PCT International Patent Application – application process may last between 1.5 and 2.5 years depending on various factors, this covers around 50 countries, and is extremely desirable to investors
• The Australian Innovation Patent Application – with a duration of 8 years, this option only provides protection in Australia. However, it is the most affordable option, (and it provides protection for new but obvious ideas – those that are still patentable but have a lesser degree of inventiveness). After 25 August 2021, Innovation Patent applications can be filed as:
  • a divisional of a standard patent application which has a filing date on or before 25 August 2021 (hereinafter “qualifying application”);
  • as a conversion from a qualifying application; or
  • as a divisional from an Innovation Patent.
• The Australian Standard Patent Application – this patent is long-lasting with a lifespan of 20 years (25 years for pharmaceutical substances).

If you’re just starting out, most enterprises in your position tend to opt for a provisional patent application, before later filing a PCT International patent application.

Get in touch now for a quote and a conversation about how to protect and make the most of your idea

Are patent applications costly?

At Platform IP, we deliver a free 20-minute consultation so that we understand the substance and scope of your idea, and can advise you on the appropriate path. Following this consultation, we will provide a quote for preparing and filing your application.

There are wide variations in costs depending on the complexity of the idea, technology, how detailed the specifications are, and on the type of application we file. However, if you would like to have a preliminary conversation, and get an idea of the estimated cost range, we can also help.

Call us now to discuss your idea or invention in confidence.

Author: Daniel Abraham | Registered Attorney & Principal at Platform®IP

This publication is introductory in nature. Its content is current at the date of publication. It does not constitute legal advice and should not be relied upon as such. You should always obtain legal advice based on your specific circumstances before taking any action relating to matters covered by this publication. Some information may have been obtained from external sources, and we cannot guarantee the accuracy or currency of any such information.