APPLYING FOR A PATENT

You have invented something and you believe it will make you a millionaire if it goes into production. You want to take out a patent immediately to protect your invention.

WHAT CAN BE PATENTED?

Not every new process that you dream up can be patented. The Patents Act 1990 sets out what can be patented. This is a federal Act and it applies Australia-wide. To obtain a patent, your invention must 1) be a manner of manufacture, 2) be new, 3) involve an inventive step and 4) be useful. We shall consider each of these requirements in turn.

Manner of Manufacture. Generally, anybody who has invented a new substance or machine or discovered a new process or method of manufacture can apply for a patent. He can also apply if he has discovered a significant improvement to any of the above.

The following are non-patentable: shape, configuration, pattern, ornamentation, mental process, schemes and plans. Further examples of things that are not patentable are 1) mere discoveries or ideas, 2) interconnection of known pieces of equipment or apparatus, 3) computer programmes, 4) mathematical formulae, 5) business systems including book-keeping systems, 6) human beings and the biological process for their generation, 6) arrangement or lay-out of materials.

Broadly speaking, your invention must be concerned with the composition, construction or manufacture of a substance, article or apparatus or be otherwise concerned with an industrial type of process.

New. This is a fundamental requirement. You will not get a patent if you re-invent the wheel! Your invention is not new if it has ever been publicly disclosed in a document available to the public anywhere in the world prior to your application. Examples of prior disclosure would be (in any part of the world), 1) prior patent applied for, 2) published in a document available to the public, 3) sale of the product, 4) use of the product in a public place.

To check whether your invention is new, at least you should carry out a search in a reference library of relevant reference books, trade publications etc. You should also carry out a search at the Patents Office to see if there has been prior registration of your invention.

Inventive Step.

If your invention is obvious, you will not get a patent. This means that if someone with knowledge and experience in the trade could easily have made your invention, you will not be granted a patent.

Useful.

This means your invention can be used. Your invention should do what you say it will do. For example, suppose you were to apply for and obtain a patent for a new type of television. Subsequently, one of your competitors tested the patent and found that the television could not be made to operate. Your competitor could then apply to the Courts to have your patent revoked.

Even if the above requirements are met, you will not get a patent for the following restricted categories.

A patent whose only purpose is to break the law e.g. housebreaking tools for a burglar.

A patent for a mere admixture of known ingredients for use as a medicine or food. This rules out quack "patent medicines".

A patent for certain areas of nuclear technology.

Also, some patents which are useful to national defence cannot be published.

Even when a patent has been granted by the Patents Office, this does not guarantee that it is a valid patent. Subsequently, any person can apply to the Courts and, if he can prove that the patent should never have been granted in the first place, the Court will revoke the patent.

WHAT KINDS OF PATENTS ARE AVAILABLE?

Basically, there are two kinds of patents that you can apply for viz 1) a Standard patent and 2) a Petty patent. The differences between a Standard patent and a Petty patent are a) a Petty patent involves a less rigorous examination by the Patents Office, b) a Petty patent can normally be obtained in six months whereas a Standard patent will take a few years to obtain, c) a Petty patent costs much less, d) a Petty patent is for a maximum of six years while a Standard patent is for 20 years. A petty patents is usually applied for when the invention is expected to have a short life and sales are expected to be confined to the domestic market. An example would be a gadget or tool.

PROVISIONAL APPLICATION

An intermediate step in applying for either a Standard patent or a Petty patent is to file a provisional application. A provisional application is an abbreviated application for a patent. However, a complete application must be filed within 12 months of lodging a provisional application. Why then apply for a provisional application? The main reason is to obtain a priority date. You may not have fully developed your invention. Nevertheless, you would like some legal protection for it, even while it is in this undeveloped state. The answer is to apply for a provisional application. When you file this, you will get limited protection for your invention from the date of filing. This assumes that a patent is eventually granted.

WHAT LEGAL PROTECTION IS OBTAINED?

A patent gives you a legal monopoly for the term of the patent i.e. either six or twenty years. You can bring an action in the Courts to stop other people using your invention. If they have used your invention, you can obtain monetary compensation from them. If you do not patent your invention, other people will be able to engage in direct competition with you, using your invention. Also, if someone independently develops the same invention, he may be able to patent it and stop you from using your invention.

WHO MAY APPLY FOR A PATENT?

Basically, it is the inventor who can apply for a patent. However, it must be pointed out that when an employee invents something during the course of his work, then the invention belongs to the employer. In that case, it is the employer who applies for a patent. These days, most inventions are developed in the research departments of large companies. The company is the entity that applies for the patent. Also, an inventor may assign or sell his invention to somebody else. In that case, it is the assignee or buyer who applies for the patent.

PROCEDURE IN OBTAINING A PATENT

If you intend applying for a patent, you would be well advised to hire a patent attorney to act for you. Patent law is complex. The invention itself is often technically complex.

The Patents Office, now known as IP Australia, is situated in Canberra. There is a branch office located in each of the State capital cities. The forms required to apply for a patent can be obtained from any of the Patent offices. As an indication of costs, the fees charged by the Patents Office during the first five years of a Standard patent are in the region of $650. The total fees charged for a Petty patent with an extension of term to six years is about $360. These charges do not take into account any professional fees payable to a patent attorney. If you hire a patent attorney to do all of the work, the total cost including Patent Office and attorney's fees would work out to $5,000 to $8,000.

The procedure for obtaining a Standard patent, assuming that you file a provisional application, is as follows. It is assumed that you have carried out all searches etc. Obtain the necessary forms from the Patents Office. Complete the provisional Patent Request form. This is fairly simple. It includes your name, address, name of inventor and invention title. Next comes the more difficult form to complete, the Provisional Specification. This must clearly describe all the features that make up the invention. Normally, drawings of the invention are included as well. You should include as much information as possible.

Within 12 months of filing the provisional application, you must file a complete application. The complete application must be accompanied by an abstract of its contents. A Notice of Entitlement must be included. This document shows that the person applying is legally entitled to be granted the patent. A complete specification must be included. This document describes the invention in detail. It must be clear and free of ambiguities. Essential features must be given prominence.

You must include in the specification the best method that you know of performing the invention. This description must be sufficient to enable anyone who is knowledgeable in the area of the invention to be able to build or carry out the invention. It must be remembered that after 20 years have elapsed, your invention will be public property. Your description must enable any competent person to manufacture the invention after this period has elapsed. Drawings, flowchart, details of actual experiments are often included.

The specification must end with a series of numbered paragraphs called claims. These are very important. A claim is a definition of the monopoly that you are applying for. When a patent is later granted, your claim will form the basis of the monopoly granted. Consequently, you must ensure that nothing is left out. Often, the claim will be split into a number of principal claims and a number of dependant claims. The principal claim will set out the essential features that make up the claim. Dependant claims will claim optional features or specify preferred arrangement of items.

Your patent application will be published by the Patents Office in its own official journal. This will happen 18 months after the date that you first filed a provisional application. Your application is now open to public inspection. Anybody can go to any Patent Office in any capital city and either examine a copy of your specifications or even buy a copy. Your specifications will also be sent to certain libraries and to overseas patent offices.

However, publication does not mean that your patent has been accepted by the Patents Office. Your patent must still be examined by the Patents Office. You may request this at any time up to five years after filing your complete application. You must pay a fee to have the examination carried out. In any case, if you do not ask for examination of your application, the Patents Office will eventually direct you to ask for examination. At this stage, you will have to inform the Patents Office of the results of any searches that you have carried out at overseas Patents Offices. The examination of the Patents Office will include investigating the following: 1) Is the person entitled to the patent? 2) Is the description of the invention sufficiently clear and complete? 3) Is the invention claimed a manner of manufacture? 4) Are the claims made supported by the description? 5) Do the claims cover no more than one invention? 6) Do the claims define a new invention? 7) Do the claims define an invention which is not obvious? 8) Are the claims clear and free of any ambiguity? You will usually find that you will have to amend your specification to overcome objections raised by the examiner.

Once you have met the requirements of the examiner, the application is accepted by the Patents Office. This acceptance is advertised in the Patents Office official journal.

Then, for a period of three months, any interested party can oppose the granting of a patent to you. He will do this by filing evidence with the Patents Office tending to show that you are not entitled to a patent. There is then a hearing before the Commissioner of Patents and the matter is decided by him.

If nobody opposes your application, or if somebody does and the matter is decided in your favour, you pay a sealing fee and the patent is granted. You are sent a certificate. However, for the remainder of the 20 years, you must pay renewal fees. Your patent will lapse if these are not paid.

There are some differences if you apply for a Petty patent instead of a Standard patent. The differences are as follows. In a Petty patent specification, you can have only one independent claim and up to two dependant claims. You do not have to formally apply for examination. Your Petty patent application is automatically examined within a few weeks of filing it. The search for prior publication is confined to documents published in Australia and not world-wide. When the Commissioner of Patents is satisfied with your application, a patent is granted. It is initially for one year but can be renewed for a further five years. When your Petty patent has been granted, details will be published in the official journal. If your Petty patent application is rejected, details will never be published.

SECRECY

If you are thinking of applying for a patent, you must not publicly disclose your invention before you have filed your application. If you do disclose information, for example, by word of mouth, the demonstration of a model, the sale of the product, an advertisement, an article in a journal, appearing on a TV show like "The Inventors", then this could prevent you from getting a valid patent. It could also be grounds for having the patent revoked if one has already been granted. You cannot sue for infringement of a patent until the patent has been granted and sealed. You can then sue for any infringement that occurred since the patent was laid open to public inspection. Consequently, if you had told somebody of your invention and he had used your invention prior to public inspection of your application, you might not be able to sue him for this period of use. However, you may safely disclose your invention in confidence to a professional advisor such as a patent attorney.

Once you have obtained a patent, you can exploit it by 1) engaging in manufacture yourself or 2) "leasing" the patent and obtaining royalties for its use or 3) selling the patent outright to someone else.


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Copyright 2000.




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