An invention may be either a solution to a problem or a new way of doing something. It may be a gadget, device, machine or apparatus, or it may be a process, method, computer program or technique. If your invention meets these criteria, you may be entitled to a patent to protect your idea.
This can often be a long and complicated process, but we will be there to assist you through it all. Contact Golja Haines & Friend to discuss the best way protect your invention.
Golja Haines & Friend can assist you with:
- Searching to see if your invention is new
- Drafting a patent specification to cover the invention in a way that is not easily avoided by potential infringers
- Filing a patent application with the Australian Patent Office – a part of IP Australia – and other Patent Offices around the world, including filing an International Patent Application under the Patent Co-operation Treaty, or by use of the Paris Convention for the Protection of Industrial Property. In Australia there are three types of patent applications: a provisional patent application, a standard patent application and an innovation patent application. We can advise on which one is the right one for your circumstances
- Prosecuting your patent application through to grant, which includes advising on responses to Office Actions by Patent Examiners (also called examiner’s reports) and filing the response in the best way to overcome the objection raised by the examiner
- Running an opposition against the grant of a patent or defending an opposition filed by someone else against the grant of your application
- Providing infringement or freedom to operate advice. This may be to a patent holder wishing to enforce the patent against an infringer or it may be to a business wishing to avoid infringing the rights of a patent owner
- Attending to annuities (that is payment of maintenance or renewal fees) along with monitoring of annuity dates
Australia has two types of patents that can be granted for inventions :
STANDARD PATENTS & INNOVATION PATENTS.
Standard Patents and Innovation Patents
The invention must be:
- New – not revealed in public anywhere in the world
- Tangible – you cannot patent theories, artistic creations and mathematical models, a patent must be a tangible invention with a ‘manner of manufacture’
- Inventive – the patent must not be obvious to someone with knowledge and experience in its technological field
- Innovative – an innovation patent must be different and take a leap beyond what is known about that technology
- Specification – a document fully describing the invention
- Scope – the scope of protection should be defined in one or more claims of the complete specification
- Standard and Innovation Patents:
- Human beings
- The biological processes for the generation of human beings
- Innovation Patents
- The biological processes for the generation of plants or animals
Note: microbiological processes or products are patentable
This is by far the most common of the two types of patents. There are about 25 times as many standard patent applications as opposed to innovation patent applications filed in Australia each year.
Key features of the Standard Patent include:
- the applicant has greater flexibility to control the rate of passage of the application through the Patent Office
- delayed publication – 18 months from earliest priority date
- pre-grant examination of the application to afford the applicant a greater assurance of the presumption of validity of a granted patent
- no limit to number of claims – no restrictions on ability to cover different aspects of invention in the one patent, though excess claims fees for more than 20 claims will apply at acceptance
- greater flexibility to file divisional applications
- fixed pre-grant period during which third parties can oppose a standard patent application before the Patent Office
- no renewal fees payable until 4 years after the filing date of the complete application
- 20 year maximum patent term
- ability to file applications for patents of addition
This flow chart illustrates the potential path to follow through the Standard Patent process.
Three key features of the Innovation Patent are:
- a lower level test for “innovativeness” that must be met
- grant of an Innovation Patent occurs without examination of the application by the Australian Patent Office
- 8 year maximum patent term.
- a maximum of 5 claims
These features make the Innovation Patent particularly suited to protect an invention:
- that is different from the state-of-the-art, in the relevant technology or industry, in a relatively small way and would not meet the higher “inventive step” test required for a standard patent
- for which examination on validity is not required prior to the grant of a patent – this also provides a saving on pre-grant costs
- that will have a relatively short commercial life.
Whilst an Innovation Patent can be granted quite quickly after the complete application is filed – within 1 month is not uncommon – it is not possible to enforce rights under an Innovation Patent until the Australian Patent Office examines it. If the Innovation Patent is approved during the examination process, the Innovation Patent is certified. It is then referred to as a “Certified Innovation Patent”.
This flow chart illustrates the potential path to follow through the Innovation Patent process.