Intellectual Property Law

Patent and Trade Mark Attorneys Australia and New Zealand

IP Information - Patents

A granted patent protects systems, methods, devices or substances (chemical compositions) that are new, inventive and useful. By obtaining patent protection for your system, method, substance or device, you can protect your competitive advantage since a patent provides the owner with a limited exclusive right to exploit the patent.

Criteria for Patentability

For an invention to be considered patentable in Australia, it must be novel, involve an inventive step (or innovative step in the case of innovation patents), be a “manner of manufacture” and it must be able to be industrially applied.

An invention is generally considered to be new or novel if, before the priority date (i.e, first filing date), it has not been disclosed in any form, anywhere in the world.

In Australia patentable subject matter includes any “manner of manufacture” in a field of economic endeavour which belongs to the “useful arts” as opposed to the “fine arts”. What is regarded as patentable subject matter differs between countries although general exclusions to patentability include mere discoveries, scientific theories, mathematical operations and laws of nature.

Some countries also exclude methods of medical treatment and business methods from patentability although these are regarded as being patentable subject matter in Australia.

Examination, Acceptance and Grant

Examination must be requested by the applicant within five years from the filing date or within 2 months after receiving a Commissioner’s Direction to Request Examination. After a Request for Examination is filed, an examination report will generally issue within 12-18 months. An applicant will have 12 months from the date of a first examination report within which to overcome all of the objections raised in the report. If all the objections are not overcome during this time, the application will lapse.

If no objections are raised during examination or the applicant manages to overcome all of the objections raised in one or more examination reports issued within the specified 12 month period, the application will proceed to acceptance. This sets a three month opposition period from the advertised date of acceptance within which any third party, may oppose the grant of the patent. If no third party opposition is filed, then the application will proceed to grant.

The owner of a granted patent has the right to stop others making, selling, importing or otherwise using the patented invention for the life of the patent. In this regard, standard patents have a 20 year term from the filing date whilst Innovation Patents have an 8 year term from the filing date.

Foreign Protection

Patent protection is available in a number of countries and in many of these countries the Australian filing date may be retained if foreign applications (and) or a single International application via the Patent Cooperation Treaty) are filed within 12 months from the Australian filing date.

Patent Application
(Australia)