Patents

What exactly is a patent?

In short, a patent is property. To be more specific, a patent is a deed of entitlement to exclude all others in the patent jurisdiction from exploiting the invention defined in the patent deed.

The definition of the invention is embodied in claims that are prepared by your patent attorney. You always need to be aware that your patent will not protect any invention that is not properly defined in those claims. It follows that your choice of patent attorney is critical.

The grant of a patent represents a contract between the patentee and the government. In short, that contract is an agreement that the government will grant the patentee a monopoly for 20 years. In return, the public will have full access to sufficient information freely to exploit the invention once the patent expires.

A patent specification filed with the patent application must contain sufficient information. That means that a person of ordinary skill in the relevant field should be able to recreate the invention without having to exercise any inventive faculties. A patent granted on an application having a specification that has an insufficient disclosure may be revoked.

An indication of the growing importance of patent applications are the annual statistics released by the World Intellectual Property Organisation (WIPO). Worldwide, the number of international applications grew by 2.3% in 2008 - to 163,600 applications. The growth rate was modest, as compared to an average 9.3% growth rate in the previous three years. But the total number of international applications filed in 2008 represents the highest number of applications received in a single year. Applicants from the Republic of Korea grew by 12.0%, China by 11.9% and Sweden by 12.5%. Sadly, Australia showed a negative growth of -1.2%. International applications convert to national applications in countries all over the world. So we can see the countries that are securing themselves a position in a future driven by knowledge as opposed to production.

There are two types of patent.  These are the standard patent and the innovation patent. The innovation patent is unique to Australia and you can read more about it here.

A patent cannot protect an invention that is not properly defined

Why file a patent application?

Many practitioners find this question difficult to answer. A patent is property and should complement your business strategy. Thus it's not possible to answer that question fully without an understanding of your business. But once you realise that a granted patent is an asset that can be sold, traded or licensed, its value becomes more apparent.

Just like any other asset, a granted patent can add significant value to your business. So your patent attorney should be asking you for some information on what you intend to do with your patent once it's granted.

The filing of a patent application is an investment in the future of the product. Indeed, it's a measure of your confidence in the product. Unfortunately, at the time of filing a patent application, it is often not possible to ascertain the value of the intellectual property associated with the product. However, successful products are usually copied. Without a patent, it will not be possible for you even to enter into meaningful negotiations with the infringers.

Have you considered whether or not your future developments will be limited by 3rd party patent rights?

What are the basic requirements for a valid patent?

Patent law can be both difficult and complex. To be safe, you should make absolutely no disclosure of the invention to anyone before visiting your patent attorney. If disclosure is absolutely necessary, then it is possible to make disclosure under a confidentiality agreement. However, it is strongly recommended that you have such an agreement prepared by a solicitor or your patent attorney.

Another important requirement is that the solution provided by your invention should not be obvious to a person skilled in the relevant field and having no knowledge of your invention. This second requirement is known as the "inventive step" requirement. The test can be difficult to understand, so you should chat to your patent attorney before making any assumptions.

Australia has a twelve month grace period. According to the grace period provisions non-confidential disclosure, made by the inventors or their successors in title is not invalidating if a complete Australian patent application is filed within twelve months of the disclosure. The filing of a PCT application designating Australia is regarded as such an application. No declarations as to when the first disclosure was made have to be lodged.

There is a limitation to the Grace Period. If a third party takes steps to exploit the invention prior to the filing of the Australian patent application then that third party will be immune from infringement once the application has proceeded to grant. Consequently the Grace Period should only be relied upon if absolutely necessary.

The grace period is NOT triggered by the filing of a provisional application, only by the filing of a standard or innovation Australian patent application or an international application designating Australia. This is a complex area so please contact me if you have any specific questions.

A simple phone call to your patent attorney is essential before you make any form of disclosure of your invention. This form of enquiry should be free of charge and can save you a great deal of inconvenience. As mentioned above, patent law is complex and differs from country to country. It would be  dangerous to assume that you are receiving accurate legal advice relevant to your situation from the Internet or your friends when considering the filing of a patent application.

Above all, keep the invention confidential. Many excellent ideas have failed to qualify for protection because of pre-filing disclosure

Material and time frames

Usually a provisional patent application is the first step in the process of obtaining a patent. Please have a look at the flowchart for more detail as to the costs and times involved. Once the provisional patent application has been filed, a 12 month clock begins to run. If the invention is made available to the public after the provisional patent application is filed, then a further application must be filed within the 12 month period to have the benefit of the filing date of the provisional.

The provisional patent application simply lapses after the 12 month period. The novelty of the invention defined in the further application must then be tested as of its own filing date. It follows that any patent granted on the application will be invalid if the invention was made available to the public after the provisional was filed but before the further application was filed.

Twelve months is often not long enough in which to commercialise an invention. The international application system can help to address this problem.

A well-prepared specification is key to an effective patent. In order to put together a specification that is both relevant and properly covers your invention the following questions should be answered:

• What is the problem that your invention is designed to address?
• Have people been aware of this problem in the past and if so what have been the past approaches to overcoming the problem?
• How will the invention be supplied? For example, will you be selling it in kit form? Will you always be installing it on site? Will it be sold uninstalled? Will you be selling it on a CD-ROM? Will it be downloadable over the Internet?
• Who are the inventors?
• Who will own the invention and, if not the inventors, how is the owner entitled to the patent from the inventors?
• Are you interested in protecting overseas markets?
• Who are your major competitors likely to be?

The effectiveness of your patent depends on your specification

A full description of the invention is important. The description should contain enough information for someone else that works in the technical field of the invention to understand and reproduce an embodiment of the invention. Please see my invention disclosure guidelines.

 

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26 October 2009 - Full Federal Court affirms that a "mere collocation" is not patentable. Read more...

11 October 2009 - Decisions from the Australian Patent Office. Read more....

14 September 2009 - A reminder to make use of the innovation patent system before it's closed down. Read more...

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27 July 2009 - I adopt FoundationIP to manage my cases. Read more...

IP Australia has decided that the Australian Post Office is a suitable venue for the lodgement of documents. Read more...

On 7 July 2009, the Full Federal Court overturned a lower court's interpretation of "filing date" as it pertains to the grace period for premature disclosure. Read more...