Patenting an Invention
An invention relates to the function of a device or machine, or to the process for making a product or to the method for carrying out business. In order to obtain a patent the invention must be new and different from what is already known.
To find out if your invention is novel you need to search the patent databases of patent offices all around the world since generally speaking, absolute world-wide novelty at the date of making the patent application is required. You can do this search on line through the European Patent Office which accesses most of the patent offices all around the world in the one search. You can also search individual patent office databases such as the US Patent database.
If your search does not uncover any anticipation of your invention in the patent databases you can then proceed to apply with some degree of optimism that patents will be granted. However patent searching is a sophisticated art usually carried out by experienced searchers and even then a patent examiner will sometimes find a prior art document which has not shown up in earlier searches.
At this point you should show us the closest patent documents you found describing inventions similar to your own. We can then advise whether it appears that you have carried out a thorough search and whether your invention appears to be novel.
There are two main types of patent granted in Australia – standard patents and innovation patents. There are a number of differences between the two patent types. These range from the cost of the patents, the length of protection they offer, the time they take to process and the type of invention they seek to cover.
There are a number of ways to commence the patenting process in Australia:
1. A Provisional Application is an optional step before filing a complete application. Provisional applications establish the priority date of your invention and give you 12 months in which to file the complete application.
2. A complete application can be filed and is required for the grant of a patent in Australia. The complete application can be either a standard patent or an innovation patent.
3. An international PCT application can also be filed in Australia and provides a first step for having patents granted in a number of different countries which and can protect your invention in important export markets.
4. National phase entry is the final step in the international application and involves filing the complete application in Australia.
The Provisional Application must be completed within 12 months of its filing and there are two different ways to complete. Either an International (PCT) Application can be filed which keeps open your options to apply for patents in nearly all countries of the world including Australia, for a further 18 months. Alternatively, you can file a Complete Application in Australia and in any overseas country of interest directly without going via the PCT route. In both cases the original filing date of your Provisional is preserved as the priority date of any application based on it.
The Innovation Patent can also be used like the Provisional as the basis of an International or overseas application. The path you choose will depend on your patenting strategy including the number of countries you want protection in and of course the comparative costs of the different paths. Costing the latter accurately is a complex matter of detailed calculation involving the anticipation of future costs but it is usually possible to make a simple qualitative decision if you know the markets you are really interested in.
If you simply want to keep your options open for a further 18 months the International (PCT) route is the most cost effective. The PCT authority also provides an International Search Report (ISR) usually within three months of applying, which is an indicator of the chances of obtaining the grant of patents around the world. If the ISR indicates prior art documents which completely anticipate your invention, you can save the high costs of attempting to obtain both Australian and overseas patents.
Nearly all countries now have a standard patent term of 20 years and annual fees must be paid, often during the application phase and then for the life of the patent. The fee usually increases with the age of the patent. Fees are also often incurred in overcoming objections during examination and in finally obtaining the grant of the patent in each country. There are European and other regional patent application routes which can reduce the cost of obtaining protection in a number of regional countries at the same time.
The writer – BILL POTTER, Principal at Varsity IP. Bill has a degree in Aeronautical Engineering from Sydney University and more than 25 years experience in providing advice relating to patents, designs, trade marks, business and company names and domain names. He has also been involved in all aspects of the commercialisation of intellectual property from obtaining government grants and venture capital funding to licensing and marketing of new technology and products. Alchemy Equities undertakes Provisional Patent Searches on behalf of its clients.
For more information on private equity funds, grants for small business and patent search. Please visit: http://www.alchemyequities.com.au
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