Brisbane, Australia

Mon. - Fri. 8AM - 6PM

Patents.

Patents can be a difficult one to navigate through. That is why you need people who are experienced and knowledgeable in the area.

Kings Patent & Trade Marks Attorneys are experts in the field of Patents.

A patent is a legal right to exclude others from exploiting an invention for a limited period of time. This right can help you or your business dominate a market, attract investors and serve as leverage in commercial negotiations.

Patents protect inventions, which can include any new and useful device, substance, method or process.  Anything new and involving some ingenuity or exercise of inventive skill may be patentable, including software, microorganisms and pharmaceuticals.  Indeed, it is a common misconception that an invention needs to be complex or a major breakthrough in order to be patentable.  Inventions having simple or small improvements can be patented, provided the improvements result in significant advantages. 

Process of Obtaining a Patent

The process of obtaining a patent starts with a description of the invention known as a “patent specification” with the Patent Office.  A patent specification is a technical/legal document that must not only fully describe your invention but also must satisfy a number of legal requirements.  Therefore, the drafting of a patent specification is best left to the professionals and we at Kings are here to help. 

Once the patent specification is lodged, it is then reviewed by the Patent Office who determine if the document is viable or if changes are needed.

If all the criteria have been met and possible changes have been implemented, then the patent will be granted.

The first wine cask | Kings Patent & Trade Marks Attorneys

Pictured: Australia has long been a nation of innovators.  In 1964 Tom Angove of Angove’s winemakers and distillers invented the wine cask. The title of the patent application was ‘improved container and pack for liquids’.

#1 | Kings Patent & Trade Mark Attorneys

Step 1

Patent Application

#2 | Kings Patent & Trade Mark Attorneys

Step 2

Examination

#3 | Kings Patent & Trade Mark Attorneys

Step 3

Response

#4 | Kings Patent & Trade Mark Attorneys

Step 4

Patent Granted

Types of Patents and requirements for a grant of a Patent

There are two types of patents granted in Australia:

  • A “standard patent”, which has a 20-year term and must pass a substantive examination for the patent to be granted; and
  • An “innovation patent”, which has an eight-year term, proceeds to grant shortly after filing and substantive examination is optional.

For a patent to be validly granted, it must satisfy at least the following requirements:

  • Novelty – the invention must be new, i.e., the invention must not have been publicly disclosed or used anywhere in the world.
  • Inventive Step / Innovative Step:
    • for a standard patent the invention must have an “inventive step”, meaning that the invention must not be obvious to a person skilled in the same technical field;
    • for an innovation patent, the invention much have an “innovative step”, meaning that the invention must vary from the prior art and vary in a way that makes a substantial contribution to the working of the invention.
  • Utility – the invention must be useful or have utility, meaning the invention must achieve the use intended by the applicant/patentee.

Obtaining patent protection in Australia and/or Overseas

The patent protection process generally begins with the preparation and filing of a description of the invention (also known as a “patent specification”) with the Patent Office in order to establish a “priority date”. Early establishment of the “priority date” is important as it is the date used to assess the novelty and inventiveness or innovativeness of the invention.

Generally, the invention must be described in sufficient detail in the patent specification to enable “a person skilled in the art” to put the invention into effect without the need to exercise further inventive skill or ingenuity.

Provisional patent applications

The process of obtaining patent protection for an invention usually starts with the filing of a provisional patent application.

A provisional patent application has a 12-month term, and the filing of the provisional patent application establishes a priority date for the invention described in the patent specification. However, importantly a provisional patent application will never turn into a patent and is thus not enforceable. Rather, the provisional patent application vests the applicant’s rights to obtain a patent and effectively provides the applicant with a 12-month window within which he or she is able to assess the commercial potential of the invention.

If no further development of the invention is envisaged, or if the applicant wishes to obtain a patent as soon as possible, it may be more appropriate to begin the patent protection process with the filing of a complete patent application.

Options for pursuing patent protection in Australia and/or overseas

Within 12 months of filing a provisional patent application, an applicant must decide whether he or she wishes to complete the process of obtaining patent protection for his or her invention. This may be achieved by the following options:

  • Direct Filing – filing a complete patent application directly in each country or region of interest.
  • PCT filing – filing an international patent application under the Patent Co-operation Treaty (“PCT”) to maintain pending international patent rights in approximately 153 countries for an additional 18 months.

In relation to the former, in Australia, a complete patent application may be for either a standard patent or an innovation patent.

In relation to the latter, it is important to note that at the conclusion of the additional 18 months, any PCT filing must still be nationalised in each country or region of interest.

Australian Standard Patent Application Process

The term of a standard patent is 20 years commencing on the filing date of the complete patent application with the Patent Office.

After an application is filed, it must be examined by a Patent Examiner before it can be accepted for grant of a patent. The examination must be requested, and an examination fee paid.

Generally, the examination must be requested within five years of the filing of the complete patent application or within two months of the issuance of a direction from the Patent Office to request examination, whichever is the earliest. If the examination is not requested, a complete patent application will lapse.

During the examination, the Patent Examiner will examine the application for compliance with the Patents Act and Patent Regulations.

If objections are raised by the Patent Examiner, the Examiner will issue an examination report and the applicant is allowed 12 months to overcome the objections raised in the report.

If no objections are raised or the objections are overcome, the Patent Office will issue a Notice of Acceptance for the grant of the patent and the application will be advertised for opposition purposes for a period of three months.

Any person may oppose the granting of a patent on an application by filing a Notice of Opposition within the three-month opposition period. If an opposition is filed, both the applicant and the opponent are given an opportunity to lodge evidence and argue their case before a Delegate of the Commissioner of Patents.

If there is no opposition, or if the opposition is unsuccessful, a patent will be granted on the complete application upon payment of an official acceptance fee.

Lastly, annual fees are payable from the fourth anniversary of the filing date onwards to maintain a patent application alive or a granted patent in force. These fees are called “maintenance fees” during the application phase and “renewal fees” after the patent has been granted.

Australian Innovation Patent Application Process

The term of an innovation patent is eight years commencing on the filing date of the complete application with the Patent Office.

Once filed, a complete application for an innovation patent will immediately undergo formalities check and a patent will be granted provided all formal matters are in order. No substantive examination of the subject matter, other than to ensure that it is not excluded subject matter, is made. Accordingly, an innovation patent is therefore one of the fastest means by which an applicant can validly claim that their invention is patented.

Importantly, an innovation patent, when granted, is not enforceable until the patent is examined and certified by the Patent Office. The examination may be requested by the patentee, a third party or upon the direction of the Commissioner. The examination is optional and is typically only requested when pursuing an infringer. A third party can oppose the certification after grant by the Patent Office.

To maintain the patent in force, it is necessary to pay annual renewal fees from the second anniversary of the filing of the complete (innovation) application onwards.

Need more information in regards to Patents Law? Contact Us Today

Our Experienced Team

Jack King-Scott | Director | Kings Patent & Trade Mark Attorneys

Jack King-Scott, PHD - Director

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Jack is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Clinton Priddle | Director | Kings Patent & Trade Mark Attorneys

Clinton Priddle - Director

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Clinton is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Jonathan Lewis | Kings Patent & Trade Mark Attorneys

Jonathan Lewis

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Jonathan is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Melanie Serafini | Kings Patent & Trade Mark Attorneys

Melanie Serafini

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Melanie is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Industries We Service

Mechanical Engineering

  • Mechanical & Electrical Devices
  • Medical Devices
  • Mining Engineering
  • Control Systems
  • Manufacturing Technology

Life Sciences

  • Biochemistry
  • Molecular Biology
  • Immunology
  • Microbiology
  • Protein Crystallography & Bioinformatics

Software & ICT

  • Apps
  • Cloud-Based Computing
  • Business Methods
  • Physics & Electrical Engineering
  • Telecommunications Engineering

Mining Technologies

  • Mineral Processing Technologies
  • Mining Methods
  • Heavy Equipment (e.g. Excavator Buckets)
  • Tailings Treatment & Disposal

Contact Us

Contact Us