How do I apply for a patent in Australia?

Making a patent application in Australia

To apply for a patent, you must file an application with IP Australia.

You can file a patent application online or download a paper application from IP Australia's website. You can also engage a patent attorney to file the application for you.

Disclosure and publication

In the application you must fully disclose your product, process or invention.

After an innovation patent is granted, the patent is published in the 'Australian Official Journal of Patents' as well as online on IP Australia's website.

Approximately 18 months after the first application for a standard patent, the patent application is similarly published.

After publication, your product process or invention will no longer be secret, and it becomes public knowledge. This reflects the public policy that in return for the benefits of being granted a patent, you must allow the product, process or invention to become publicly known so that it can help others to advance technology. The other important purpose of publication is that you are entitled to stop anyone who infringes your standard patent from this date.

If your innovation patent has been examined, you are entitled to stop anyone who infringes your innovation patent from the later of the publication date, or the certification date (which occurs after examination)

Applying for an innovation patent

An application for an innovation patent is checked by IP Australia for compliance with certain formalities. Generally, the innovation patent will be issued 1 month later.

An innovation patent is not examined by IP Australia, unless you request examination.

Examination occurs when patent examiners consider whether there is compliance with all the requirements of the Patents Act 1990, including whether your innovation meets the technical tests described earlier of patentable subject matter, newness (or novelty), whether there is an innovative step, and whether the innovation is useful (or has utility).

Normally, you would only request an examination if you sought to stop an infringer.

After a successful examination, the innovation is certified, and you become entitled to stop infringers.

Applying for a standard patent

To apply for a standard patent your first application can be any one of the following.

Type of application

Description

Why you might consider this for your first application

Provisional application

This application need not meet all the requirements for a complete application.

From April 2013 a provisional application must disclose the invention in a manner that is clear and complete enough for the invention to be performed by a person skilled in the relevant field. Failure to do this will result in loss of priority date.

It enables you to file an application without a full specification or description of the claims (or patent scope) that you will seek.

This type of application must be followed by either a Patent Cooperation Treaty (PCT) application or a complete application within 12 months, otherwise it lapses.

This application is never published and so never becomes public knowledge.

This application confers a priority date, and still allows you a further period of 12 months to evaluate your innovation and to develop it further before you have to finalise your full specification or description of the claims (or patent scope) that you will seek.

There are 3 advantages in doing so:

  1. You get the earliest possible priority date, which is the date by reference to which the newness (or novelty) of your innovation is tested. This can be very important in areas of technology that are fast moving.
  2. Your application will have priority over later applications from other persons seeking a patent over the same innovation.
  3. You have the ability to make your innovation more robust with 12 months of further development, which helps you make the strongest claims (or patent scope) that you will seek.
Patent Cooperation Treaty (PCT) application A Patent Cooperation Treaty (PCT) application deems your application to be simultaneously lodged in all the countries that are members of the treaty.

Advantages of a PCT application are:

  1. You do not have to make a separate application in each member country of the treaty where you may seek patent protection, which represents a significant cost saving.
  2. It allows you a period of up to 21 or 31 months from your earliest priority date to decide in which specific countries you want to apply for a patent.
  3. It is possible for a PCT application to be preceded by a provisional application, which would confer on you all the advantages of both.
Complete application A complete application is one which has a full specification or description of the claims (or patent scope) that you will seek. You can file a complete application as the first application if, in your circumstances, there is no advantage to filing an earlier provisional or PCT application.

Procedure after a standard patent application is filed

After the application is filed, the application is examined. As with innovation patents, examination occurs when patent examiners consider whether there is compliance with all the requirements of the Patents Act 1990, including whether your innovation meets the technical requirements of:

  • patentable subject matter
  • newness (or novelty)
  • inventiveness
  • usefulness (or utility).

After that examination process, in Australia, other parties have a period of 3 months to seek to oppose or challenge the grant of your patent. Occasionally a party may wish to oppose or challenge the patent examiner's findings in relation to patentable subject matter, newness (or novelty), whether there is an inventive step, and whether the innovation is useful (has utility), or other matters.

After a successful examination, if there is no opposition or challenge, your patent is granted. If there has been opposition, after the patent examiner's decision is affirmed, your patent is granted.

Contact

General enquiries 13 QGOV (13 74 68)

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