A patent is a right, granted by the government, which (broadly speaking) gives the owner of a validly granted patent the right to prevent others from commercialising the claimed invention without permission.
The underlying idea is that although most ‘monopolies’ are undesirable, a limited term monopoly right to perform (commercialise) a new and useful invention is justified and desirable in return for the inventor fully disclosing (by way of a patent application) how to perform the invention. This is considered to reward the inventor, provide an incentive to development of new technologies, add to the sum total of human knowledge and allow others to freely perform the invention after the term of the monopoly right (patent) has expired.
The requirement that the invention be new (and, for standard patents non-obvious) is normally considered in relation to the situation at the date of filing of the applicant’s first patent application for the invention. It is therefore important to keep the invention confidential, and not to commercialise or publicly disclose the invention until after a patent application has been filed. As a measure to assist inventors who have publicly disclosed an invention before filing a patent application, Australian law provides a twelve-month “grace period”, which effectively excludes consideration of disclosures made by the inventor and/or applicant, provided a “complete” patent application (see below) is filed within 12 months of the earliest such disclosure. Nonetheless, to help maximise rights in the invention, it remains important to file a first patent application before any commercialisation or non-confidential disclosure of the invention. In our view the Australian grace period should be treated by inventors and patent applicants as a provision which can assist if a mistake has been made, rather than a basis for planning the timing of disclosures and patent filings.
Types of patent application
There are three main types of patent application in Australia.
- ‘Provisional’ patent applications have life of 12 months, and then expire – their main purpose is to provide a ‘priority date’ (as of which novelty and inventive or innovative step is judged) which may be claimed by a ‘complete’ application filed within the 12 month life of the provisional patent application.
- ‘Standard’ patent applications (which are applications for standard patents), must be examined before grant, and may be regarded as normal patent applications. Examination must be requested, normally by about four years after the earliest priority date, but earlier if desired. Standard patents normally have a maximum term of 20 years from the standard patent application filing date. Standard patent applications, including the entire specification, are generally published about 18 months after the earliest priority date.
- ‘Innovation’ patent applications (which are applications for innovation patents), normally proceed rapidly to grant and publication without substantive examination (although innovation patents must be examined and certified before they can be enforced). Innovation patents have a maximum term of 8 years from the innovation patent application filing date.
Both standard and innovation patent applications are ‘complete’ applications which may claim the date of an earlier provisional application, and thereby obtain an effective extension of the maximum terms mentioned above, of up to 12 months when measured from the filing date of the provisional application. Complete applications may, however, be filed without a preceding provisional application.
Requirements for validity
For a patent to be validly granted, the claimed invention must:
- Be a “manner of manufacture”. Assessment of this requirement can be complex, but this broadly means that the claimed invention must relate to some technical or tangible implementation, rather than being, for example, an artistic creation, theory, or a purely mental process.
- Be new (or ‘novel’), which broadly means that the claimed invention must not have been non-confidentially disclosed, either by another party or by the applicant (taking into account ‘grace period’ provisions, outlined above) before the priority date.
- For a standard patent, involve an inventive step. This does not necessarily mean that the invention must be a huge leap forward – most patents are granted for improvements to existing technologies – but rather that the claimed invention must not have been (as of the priority date, but taking into account ‘grace period’ provisions) an obvious thing to do, to someone with knowledge and experience in the field of the invention.
- For an innovation patent, involve an ‘innovative’ step. This is generally a lesser requirement than the ‘inventive’ step requirement of a standard patent, and is met unless the claimed invention differs from what was previously known only in ways that make ‘no substantial contribution to the working of the invention’. The shorter maximum term of an innovation patent, compared to a standard patent (8 years, rather than 20 years) reflects this less stringent requirement.
- Not have been secretly used by the owner, or with the owner’s consent.
There are some other requirements for validity that relate to the form and content of the patent application itself. For example, the specification must provide sufficient information to allow a person skilled in the relevant field to perform the invention, must disclose the ‘best mode’ of performing the invention known to the applicant at the time of filing the application, and must meet various formal requirements.
Searching
Because the patent protection available for an invention is highly dependent on the differences between the invention and what was previously known, it is sensible to take steps to assess whether an invention is new prior to committing substantial expenditure on a patent application.
One way of assessing whether an invention is new is to search previously published patents and patent applications (the patent literature). This is sometimes referred to as “novelty searching”. We would be happy to advise regarding this.
It is also important to appreciate that there may be earlier patents, owned by other parties, which may be infringed by commercialisation of a particular new invention. An invention which is new and inventive may nonetheless fall within the scope of one or more earlier patents. (By way of hypothetical example: upon its invention, the colour television may have been a new and non-obvious invention, but commercialisation of colour televisions could nonetheless have fallen within the scope of an earlier patent for a basic monochrome television.) It is possible to perform “freedom to operate” (or FTO) searching of the patent literature to assess whether relevant earlier patents exist. Such searching is quite different to the “novelty” searching discussed above.
Neither novelty nor FTO searching mandatory. Such searchings is not included in the normal cost of preparing and filing a patent application, and is very rarely performed by a patent attorney unless the patent attorney is specifically instructed to do so.
Overseas patent applications
Patent protection is territorial, meaning that a patent only provides rights in the territory in which it is granted. Thus it is necessary to file an application in each territory (normally country) in which protection is to be pursued. Translation of the specification into the local language is required by some countries.
Overseas applications in most countries can claim the ‘priority date’ of first-filed Australian patent application, provided the overseas application is filed within twelve months. A Patent Cooperation Treaty (PCT) application, sometimes called an “International” application, can extend this date, for most commercially important countries, until about thirty months from the earliest priority date.
The information set out above is intended to be only a very brief introduction to some important features of patent protection, particularly in Australia, and should not be considered a full explanation of the patent system or a basis for commercial decisions. We would be happy to discuss patent protection, and the procedures and costs involved, in more detail.