What is a patent?

What are the rights I can get through patent protection?
Generally, in the case of products which embody the invention, the inventor is granted the exclusive rights to make, hire, sell, import, or stock the product which is the subject of the invention. In the case of patented processes the inventor is granted the exclusive right to use that process in Australia, and also, in respect of the resultant product of the process, an exclusive right to make, hire, sell, import, or stock that resulting product.

Are there different types of patents?
Yes, in Australia there are two types of patents, the standard patent, and the innovation patent. The duration, types of subject matter, and the number of claimable features are generally lesser in respect of the innovation patent, however, as will be seen below, the thresholds for obtaining an innovation patent are more easily met which makes them more attractive for certain inventions, particularly incremental improvements to existing technology.

How long does patent protection last for?
The term of patent protection in Australia for a standard patent is 20 years. However if your invention claims a pharmaceutical registered on the Australian Register of Therapeutic Goods and meets certain other criteria, the term of protection may be extended by up to five years. Notwithstanding the 20 year term for patent protection, renewal fees will need to be paid in order to maintain its currency during this time.

The term of protection for an innovation patent is 8 years and this is not extendible in any way.

What can I get patent protection for?
The inventions that can attract patent protection depend on the country in which you wish to seek protection.

There are the traditional areas of patentable subject matter, for instance, mechanical and electronic devices have been the mainstay of patents for many years now. Further, novel chemicals and pharmaceutical compositions are also patentable subject matter. These areas of human endeavour are protectable world wide. It is also now generally uncontroversial to grant patents to DNA sequences, and genetically modified bacteria and viruses.

Areas in which Australia provides protection where some other countries and systems do not, include patenting of higher life forms such as transgenic animals, methods for the medical treatment of humans, software patents and business method patents. If your invention encompasses any of these subject matters it would be prudent to speak to a patent attorney who can advise you as to the countries and regions in which your invention might be protected by patents.

What can't I get protection for?
Currently it is not possible to obtain patents for human beings and the biological processes for producing them. Also there are certain areas such as nuclear technology in which special provisions of the Patent Act come into play.

Also, it is not possible to patent discoveries or mere ideas. For instance, it is not possible to patent a mathematical algorithm. However if that idea is put into practice by incorporating it into a device or as part of some software, it may become patentable.

My invention is in an area of patentable subject matter, what will qualify it for protection?
Firstly, the invention needs to be novel. That is it cannot have been disclosed or described in any document or used in any place in the world. If the invention has been described in a document or used somewhere in the world then this description or use anticipates your invention and you lose novelty.

Even if your invention is novel, it also must be inventive over that which proceeded it. The judgement is made by reference to a hypothetical person skilled in the art, who is not particularly inventive. If your invention would have been apparent to the person skilled in the art as at the priority date of your patent application then your invention will be deemed obvious and no patent will be granted.

If your invention does not meet the high threshold set by the test for inventive step, it might still be able to be protected by way of an innovation patent which only requires an innovative step. In that case there must be some difference between the invention and what is currently known about that technology and this difference must make a substantial contribution to the working of the invention.

How do I obtain patent protection?
Patents, like designs and trade marks, must be applied for in order to obtain protection. You can prepare your own patent application including your claims to your invention, however this is generally not advisable due to the complexity of the rules surrounding patent drafting. Incorrect drafting of a patent application can result in your application being refused, or the granting of a patent which is easily circumvented by infringers.

It is important to note that only registered patent attorneys are qualified to assist and represent an inventor in respect of drafting and prosecuting a patent application with IP Australia. Intellectual Property lawyers may advise on patentability, but will not be able to represent you in your dealings with IP Australia.

When should I file for patent protection?
If an application is going to be made then it is important that it not be disclosed in any way to any party who is not under an obligation of confidence. Whilst there are a number of countries that have "grace periods", which are periods in which such public disclosures are permitted, including Australia, the effect on your ability to patent the invention globally will be seriously diminished.

Further, it is very important that the invention not be used commercially, even in secret, before the application is made. If it has been so used, the patent will be able to be challenged as it is a requirement that the invention not be secretly used in order for it to be a patentable invention.

Who can apply for a patent?
Generally it is the inventor who is entitled to apply for patent protection in Australia. However applications are able to be made by those who have acquired the rights from the inventor as well as the employers of inventors who have developed the technology in the course of their employment.

I have been granted patent protection, when can I take action for infringement?
If your patent is granted and you have found a competitor using or selling your invention, you are entitled to take action for infringement. However, if you are the owner of an uncertified innovation patent you will need to apply to IP Australia first and have it examined. Once that is done and provided it is accepted and your innovation patent is certified, your rights will be the same as those of a standard patent holder in which case you can make demands on the infringing party to cease infringement. Should the infringing action not cease forthwith, you would be entitled to bring proceedings, usually in the Federal Court, for patent infringement