Patent protection in 5 Key Steps
“After meeting Warren through a start-up community, he prepared comprehensive design and patent applications to protect my product. Warren established a trustworthy and safe working relationship which I believe is essential to a long-term business relationship, especially when it comes to intellectual property. ”
Innovating and developing new products is an exciting venture for any Australian business. Securing your innovation with a patent is vital for protecting your intellectual property and ensuring others don't copy or exploit your invention. Below is a comprehensive guide to navigating the patent application process, from initial discussions to paying renewal fees.
1. Initial Consultation with a Patent Attorney
Before diving into the patent process, it's essential to have a thorough consultation with a registered patent attorney. This initial phase may involve one or more of the following:
Discussing the Invention: You will describe your invention, its purpose, and how it works. It’s vital to share all details, including prototypes, sketches, and technical drawings.
Feasibility Check: Your attorney may assess whether your invention is novel, inventive, and suitable for patent protection.
Preliminary Research: If needed, your patent attorney can conduct preliminary patent searches to check for prior art, which involves searching existing patents or publications that may impact your invention’s patentability.
Rest assured that there is no need for a non-disclosure agreement with your registered patent attorney. Australian patent attorneys are bound by strict professional and ethical obligations to maintain client confidentiality, much like lawyers, as discussed in our FAQ page.
2. Preparing and Filing a Provisional Patent Application
Once your patent attorney understands the intricacies of your invention, the next step usually involves filing a provisional patent application. This provides a priority date, securing your place in line, so to speak, for 12 months. This period allows time to refine the invention before filing a complete patent application. Here’s what you can expect at this stage:
Drafting a Detailed Patent Specification: The patent specification must provide a comprehensive description of your invention, including how it works, how it's made, different embodiments, and its technical advantages and potential uses. This typically includes patent claims, drawings, and technical explanations.
Back-and-Forth Communication: Expect several iterations of the specification as your attorney may go back and forth with you to fine-tune details. This is crucial to ensure the invention is sufficiently covered in its scope and is adequately described for future legal protection.
Filing the Application: Once finalised, your Australian patent attorney will lodge the provisional application with IP Australia. You can now disclose your invention to third parties (e.g., manufacturers, investors, distributors, customers).
3. Filing a Complete (Standard) Patent Application
Within 12 months of filing the provisional application, a complete patent application must be filed (e.g., in each jurisdiction of interest) to continue with the process. This stage may include:
Refining the Specification: At this stage, any improvements or changes made to the invention over the past year should be incorporated into the patent specification.
Claims: These define the boundaries of what the patent can protect. Your patent attorney will carefully refine these claims to ensure the invention is protected against possible infringement, including obvious workarounds that third parties might try to come up with.
International Patent Applications (PCT): If you intend to file for protection in other countries, this is the stage where you can opt for a PCT (Patent Cooperation Treaty) application. In essence, this is a time-buying application that gives you up to another 19 months before you need to file complete patent applications in each jurisdiction of interest.
4. Patent Examination Process
The complete patent application then enters the examination phase, where patent office examiners review your application to ensure your invention meets various legal requirements for patentability.
Initial Examination: Examiners will check for novelty, inventive step (whether it is non-obvious), and industrial applicability. They will search for prior art that could affect the patentability of your invention.
Objections from the Patent Office: It is common for examiners to raise initial objections at the outset, and often these relate to prior art findings which could affect the scope of your claims.
Responding to Objections: Your patent attorney will liaise with the patent office to address the objections. This may involve preparing and filing patentability arguments, clarifying aspects of the invention, and amending claims.
Further Rounds of Examination: In some cases, there can be multiple rounds of examination where the patent office raises further objections. This back-and-forth is a standard part of the process.
5. Patent Acceptance and Grant
Once all objections are successfully overcome, the patent office will publish the acceptance of your patent application in an Official Journal of Patents.
Opposition Period: Once acceptance is published, there is typically a short window (e.g., three months) where third parties can oppose the grant of your patent. While opposition is rare, your patent attorney will monitor this phase to address any challenges.
Grant: Once the opposition period passes, the patent is formally granted, and you now hold exclusive rights to your invention.
Where to from here?
Once a patent is granted, ongoing maintenance is required through the payment of renewal fees:
Frequency of Fees: In Australia, renewal fees are due annually, starting from the fourth anniversary of the filing date of the complete application.
Failure to Pay: Failure to pay renewal fees can result in the loss of your patent rights, so it is essential to keep track of these deadlines. Your patent attorney can assist with managing these deadlines and payments and ensure your patent rights remain in force.
Renewals of foreign patents: Each country has its own renewal schedule and fees, which your attorney can help coordinate.
Securing a granted patent can be a complex but very rewarding journey and working with a qualified patent attorney can ensure that your invention is thoroughly protected from the start. If you’d like to discuss the patent application process further, please don’t hesitate to get in touch.