Frequently Asked Questions
Should I do a patent search before I file a patent application?
In short - yes. To qualify for a patent, an invention must be new (novel) and inventive (sufficiently innovative/non-obvious). These requirements are often difficult to meet as new inventions are assessed against public information anywhere in the world. With this in mind, we always recommend that our clients undertake a patent search. A patent search represents an important part of the due diligence process for any new IP-related project.
How do I do a patent search?
The key to a good search is to select the most appropriate keywords that are unique to the innovative aspects of your product. In addition to undertaking desktop research to locate similar products, there are a number of free online resources for searching patent information. Below are links to three of the more user friendly patent databases:
Europe (with broader International coverage): http://worldwide.espacenet.com/
International (PCT) Applications: http://www.wipo.int/patentscope/search/en/structuredSearch.jsf
What do I do with the patent search results?
You need to analyse the search results, identify the most relevant documents you have located, and then clearly identify the key differences between your product and the closest existing comparator. Also remember to keep details of the search strategy you have used and the databases you search, as well as the raw results, for use in the future, if necessary.
If the patent search is clear does that mean my product is patentable?
A clear search is good news; however, it does not mean that your product will always be patentable. The search results are a product of the strategy you have used, and it’s practically impossible to carry out a search that covers every piece of available information. This means it is always possible that a search carried out by a patent examiner or another party will locate information you didn’t uncover in an earlier search. What’s more, patent applications are not published until 18 months after they are filed, so no search will locate patent applications filed in the 18 months prior to your search.
How much does a patent search cost?
You should always do your own searching before paying others to conduct a search. The costs for a professional search vary depending on the requirements and the particular project but a reasonably good international patent search can be obtained for about $1500.
What is a patent?
A patent is a set of exclusive (monopoly) rights granted for a finite term (normally 20 years) by the government for an invention (e.g. a device, substance, method or process) that is new, inventive, and useful.
What are the requirements for a patent?
There are many requirements for obtaining a patent but the most common grounds for refusing a patent application are lack of novelty and lack of inventive step (obviousness). See our Patents page for an explanation of these terms.
What is the test for novelty?
To qualify for a patent, an invention defined in a claim of a patent must be novel (new) in light of prior art information available prior to the priority date of the claim. The scope of the prior art base may vary between jurisdictions, but often includes all information that is publicly available (in a document or by doing an act such as a public use) prior to the priority date.
Many countries have some form of grace period that allows you to still obtain a valid patent even if you have dislcosed your invention before filing your patent application. However, these grace periods, when availalble, are for limited periods and can have strict requirements. If you are in any doubt as to whether a disclosure will prevent you from obtaining a patent then you should consult a patent attorney.
Novelty is established relative to the prior art when a claim includes at least one feature that is not disclosed in the prior art.
What is the test for inventive step?
To qualify for a patent, an invention defined in a claim of a patent must not be obvious to a person skilled in the technology area relevant to the invention at the priority date of the claim. The way this requirement is applied can differ between jurisdictions but this is essentially a test that excludes inventions that only differ from the prior art in terms of features that would have been considered obvious to those skilled in the art when faced with the problem addressed by the invention at the priority date. It is important not to assess inventive step with the benefit of hindsight as many inventions can appear obvious based on a hindsight analysis.
What is the priority date?
The priority date is normally the filing date of the first patent application describing the claimed subject matter. The priority date is important because it is the earliest date that the patentability of your invention can be assessed.
What is the term of a granted patent?
The duration of a standard patent in Australia is 20 years and an innovation patent has a term of 8 years. The term of a standard patent can be extended beyond 20 years (up to a maximum of 25 years) if the patent relates to a pharmaceutical invention and meets certain other requirements. Most countries around the world issue patents for a 20 year term.
Is it possible to get a single International or worldwide patent?
Whilst it is possible to file an international patent application via WIPO and secure regional patents (e.g. for EU members, these options streamline the patenting process), there is no such thing as a worldwide patent. Thus, if you require protection in a particular country/region you must file a patent application in that country/region at some point.
What is a provisional patent application?
Whilst not available in all countries, a provisional patent application is the most common first step in seeking patent protection for Australian entities. A provisional application has a life of 12 months and its main purpose is to establish a priority date for your invention and to reserve your patent rights both in Australia and overseas.
What is included in a patent application?
Apart from formalities such as the details of the patent applicant (owner) and inventors a patent application must be accompanied by a patent specification that describes the invention.
What information do I need to provide to a patent attorney to draft a patent specification for my invention?
We need all the information you have regarding your invention and variations you believe could be made to the invention without departing from the inventive concept. Drawings can be particularly useful. Furthermore, we need details of the key features of your invention that differentiate it from the closest comparator and details of any prior art searches you have conducted.
When should I file my patent application?
A patent application should be filed before there has been any public disclosure or commercial exploitation of the invention. However, once a patent application is filed, official deadlines for taking further actions apply, so it is also important that you do not file your patent application prematurely as this can lead to you incurring substantial patent related expenses long before you have established the commercial feasibility of your invention.
How much does a provisional patent application cost?
The costs for a provisional application vary depending on the complexity of the invention and the quality of information you are able to provide but are most commonly between $4000 and $6000 (ex GST). Once we have a clear idea of your invention we can provide you with a fixed/capped fee for preparing and filing the provisional patent application.
What can I do once the provisional patent application has been filed?
Once the provisional application is filed, you are able to disclose and commercially exploit your invention (as described in the provisional patent application) without impacting on its patentability. During the life of the provisional patent application, you should be working diligently to commercialise your invention. Ideally, by the expiry of the provisional application you will have commercialised your invention to the point where you have a clear idea of its commercial potential so that you are well placed to make an informed decision about investing further in the patenting process.
What happens at the end of the 12 month term of provisional patent application?
If you wish to continue with seeking patent protection, on or before the expiry of the provisional patent application, you will need to file a complete (standard) patent application with effect in each country where you require patent protection. If you are only interested in patent protection in countries/regions that are members of the Patent Co-operation Treaty (PCT) then the most common approach is to file an International (PCT) application. If there are other countries of interest that are not members of the PCT then separate applications will need to be filed in each of those other countries, on or before the expiry of the provisional patent application. If you are only interested in patent protection in one or two countries then it may be more economical to file directly into those countries regardless of whether they are members of the PCT or not.
How much does an International (PCT) application cost?
The costs can vary quite widely from case to case depending on the time required to prepare the complete patent specification and we can provide detailed and tailored information and costings for this stage of the patent process upon request. However, in general terms, the estimated cost for an International (PCT) patent application, including the cost for drafting the complete specification is $10,000-$12,000 (ex GST).