Patent Applications & Patent Filing Australia

During his career, Dr Tim Fitzgerald has assisted clients and associates with thousands of patent applications in jurisdictions throughout the world.

Tim has extensive experience with the preparation of technically complex patent specifications, including for Biotech & Life Sciences, MedTech, and Agtech subject matter.

Tim also enjoys drafting and prosecuting of patent applications for mechanical inventions and has assisted numerous clients in this respect.

IP Flourish can offer fixed pricing for the preparation and filing of patent applications for local clients and foreign associates.

Call +617 3177 3365 or book a free consultation.

General Patent Application Informati0n

What is a patent?

A patent is a form of intellectual property providing a legally enforceable right in relation to the commercial use of an invention.

Among the requirements for patent protection of an invention is that:

The invention is new (‘novel’)
The invention is non-obvious (involves ‘inventive step’)

Notably, if you have demonstrated, sold, or discussed your invention outside of strict confidentiality prior to submitting a patent application, this can jeopardise your ability to obtain patent protection.

A granted patent provides you with exclusive commercial rights to your invention that can be enforced against other parties in court, if necessary. A patent also provides options for licencing or assigning rights to your invention to other parties.

What is Patent Filing?

Patent filing refers to the formal process of submitting a patent application to a relevant government agency or patent office to seek legal protection for an invention.

The patent application includes technical specifications and diagrams that demonstrate how the invention works and what makes it unique.

Patent filing is a complex undertaking that incorporates legal, technical, and administrative aspects. It requires the expertise of a patent attorney to navigate the requirements and maximise the chances of obtaining intellectual property protection.

What are the types of patents and patent applications?

There are various specific forms of patents and patent applications. Three primary forms are accessible from most jurisdictions, including Australia and New Zealand.

Provisional Patent Application:

A provisional patent application provides a priority date for an invention applicable throughout the world, and 12 months to decide whether to proceed further with the patenting process.

Provisional patent applications are commonly filed where an invention is not yet fully commercially ready, or where there is some uncertainty as to whether an invention will ultimately be commercialised.

Within 12 months of filing a provisional application, the application must be ‘completed’ by the filing of a standard or international application (discussed below). There is scope to update the patent specification to account for additional developments to or refinement of the invention prior to completion.

Once a provisional application is filed, it is permissible to describe the invention as ‘patent pending’, signaling the intention to obtain a patent in the future. If a provisional application is not completed within 12 months, the application will lapse unpublished meaning that the description of the invention in the application will not be made publicly available.

Standard or Complete Patent Application:

Granted patent protection must be obtained on a jurisdiction-specific basis. For example, patent protection in Australia is obtained via the filing of a ‘standard’ or ‘complete’ Australian patent application.

Once a standard patent application has been submitted, the applicable patent office (e.g. IP Australia, in the case of an Australian patent application) will examine the application and consider whether it meets legislative requirements, including novelty and inventive step.

The time from filing a standard patent application until issuance of a first examination report is typically at least 1-2 years, although some jurisdictions (including Australia) allow for expedited patent examination.

The full term of a standard patent is 20 years from the filing date, providing relatively long-term protection and commercial rights.

International (PCT) Patent Application:

As noted above, patent protection is jurisdiction specific. However, it is possible to file an international patent application under the Patent Cooperation Treaty. A PCT application provides a standard patent filing date for over 150 jurisdictions around the world. Importantly, however, it is ultimately still necessary to enter individual applications in each jurisdiction of interest.

For most jurisdictions, where a PCT application is filed, the deadline for entering a jurisdiction-specific application from the PCT application is 30 months from the earliest priority date (e.g. the filing of a provisional patent application, from which the PCT application takes priority).

What can and can’t be patented?

Patent protection is broadly applicable to products and processes across technological areas, including mechanical technologies, biological technologies, chemical technologies, and information technologies.

Nevertheless, some subject matter is considered ineligible for patent protection. Excluded subject matter varies among jurisdictions, however the following subject matter is widely excluded from patentability:

Mere discoveries, ideas, theories etc. without practical implementation
Artistic creations
Human beings per se and biological processes of reproduction of human beings

It is also notable that although computer-implemented technologies (such as software and applications) are not typically subject to blanket exclusion, there can be significant challenges in establishing patentability in this technology area in many jurisdictions, including Australia.

Who should apply for the patent?

To be eligible for a patent, the applicant (or applicants) should be:

the inventor(s)
the person who has legally obtained rights to the invention from the inventor(s)
the employer of the inventor(s), where the invention was developed in the course of normal employment duties.

An address for legal service will need to be provided for a patent application. Notably, patent attorneys are registered in a jurisdiction-specific manner; e.g. an Australian registration is required for an attorney to act before the Australian patent office.

What does a typical patent application & filing process look like?

The following is an example of a typical (although not the only possible) patent application process for an Australian applicant, where patent protection in multiple jurisdictions is required:

Instruct a registered attorney to prepare and file a provisional patent application in Australia directed to an invention;
By 12 months of filing of the provisional patent application, arrange for the attorney to prepare and file a PCT application including any updates to the invention;
By 30 months (or in some cases 31 months) from the provisional application filing date, arrange for the attorney to coordinate entry from the PCT application into all jurisdictions of interest for patent protection;
Work with the attorney to navigate patent examination of jurisdiction-specific patent applications. A first examination report typically issues within about 1-2 years, although expedited examination may be available. There will be specific deadlines associated with requesting examination, responding to examination reports, and/or obtaining patent acceptance;
Where jurisdiction-specific patents are accepted and all official fees paid, patent grant will occur (subject to any third party oppositions, which are relatively rare). After grant, each jurisdiction-specific patent will be enforceable and in effect for 20 years from the PCT filing date, subject to payment of recurring renewal fees.

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