Australia Patent Process

As an inventor in Australia with a novel idea or invention that is both useful and non-obvious in relation to prior art, you have certain pre-requisites to consider for protecting your intellectual property:

• Grace period after disclosure: If you have already disclosed your invention publicly, Australian law provides a 12-month grace period from the date of disclosure during which you must file your patent application.
• Filing a Provisional Patent Application: If your invention is still under development or has not yet been disclosed, it is advisable to file a provisional patent application. Filing this early-stage application establishes a priority date for your invention.

Within 12 months of filing the provisional application, you will need to submit a complete specification for a standard patent application. The priority date protects your rights by giving you precedence if another inventor attempts to file a patent for the same invention. Failing to file a complete patent application within this period may result in losing the opportunity to claim the invention, making the provisional patent filing a crucial step in securing your intellectual property rights in Australia.

 

1. Advantages of Filing a Provisional Patent Application

a) Cost-Effective: Filing a provisional patent application is a more affordable option compared to filing a complete patent application. The cost savings come from the fact that a provisional application doesn’t require formal claims, a detailed description, or extensive examination. For inventors, especially those working with limited resources, this cost efficiency allows them to secure an early filing date without the financial burden of a full application. This early step also enables inventors to test the waters before committing to the more expensive complete specification process. It also provides time to gather additional funding if needed to proceed with the full patent application later.

b) Early Protection: A provisional patent application helps establish an early priority date, which is the date when the patent office officially recognizes your invention. In countries like Australia, which follows the first-to-file system, the priority date is crucial. If someone else tries to patent a similar invention after your provisional application’s filing date, your invention will take precedence. This early protection allows inventors to disclose their invention, test the market, or discuss it with potential investors without worrying about someone else filing for a similar invention.

c) Flexibility: The provisional patent application grants inventors a 12-month window to decide on the next steps. During this period, you can further develop or refine your invention, conduct additional research, or determine its commercial viability. This flexibility is highly advantageous because it allows inventors to improve their inventions and file a more complete and robust specification for a standard patent application. It also provides time to secure investors or licensing deals, which can influence whether or not you move forward with the full application.

d) Allows for “Patent Pending” Status: Once you file a provisional application, you can label your invention as “Patent Pending,” which signals to the public that you have begun the process of securing legal protection for your invention. Although it doesn’t grant enforceable rights yet, the patent-pending label can act as a deterrent to competitors who might consider copying your invention. It can also increase your credibility when approaching potential investors or business partners, as many prefer to invest in innovations that have some form of IP protection in progress.

 

2. Disadvantages of Filing a Provisional Patent Application

a) No Legal Protection Until Complete Application: Although a provisional application secures an early priority date, it does not provide you with enforceable patent rights. You cannot sue someone for infringement based on a provisional application alone. Full legal protection only comes after filing and grant of a complete patent application with specific claims that define the scope of the invention. This means you must still invest in the complete application if you want to have the power to stop others from using or copying your invention.

b) Limited Timeframe: The provisional patent application is only valid for 12 months. If you fail to file a complete specification within that time, the provisional application will lapse, and you will lose the priority date. This can be a significant risk for inventors who may not be ready to file the complete application within the allotted timeframe. Losing the priority date means that if someone else files for a similar invention after your provisional lapses but before you file a complete application, they could gain the patent rights instead.

c) Incomplete Disclosure Risks: A provisional patent application does not require the same level of detail as a complete application. While this flexibility is an advantage, it also comes with risks. If the provisional filing is vague or lacks important technical details about your invention, those aspects may not be protected when you later file the complete specification. If key elements of your invention are left out of the provisional application, it may be difficult or impossible to claim those features in the complete application, which could weaken your overall patent protection.

 

3. Details Needed for a Provisional Patent Application

Necessary Details:

• A clear and concise description of the invention should be included to explain how the invention works and what it accomplishes. The description does not need to be exhaustive but must be enough to demonstrate that the invention is novel and useful.
• Visual representations are helpful to illustrate your invention. These can be simple drawings that support the written description and help explain the functional aspects of your idea.
• The description should highlight the novelty of the invention, explaining why it is different from existing solutions and how it provides a new and useful approach.
• At least one embodiment of the invention should be described. This means that at least one way the invention can be made or used should be included. Providing a specific example or implementation helps to solidify the inventive concept.

 

4. Details That Can Be Missed:

• Unlike a complete application, the provisional filing does not require formal claims that precisely define the scope of protection you seek. You can leave the drafting of claims for the complete specification stage.
• You don’t need to describe all possible versions or variations of the invention at this stage. The complete specification is where you can add more detail about alternative ways the invention can be implemented and add additional technical depth or details related to the invention.

 

5. When Should You Consider Filing a Provisional Patent Application?

a) Planned Disclosure: If you are planning to publicly disclose your invention to potential investors, clients, or business partners, it is a good idea to file a provisional patent application beforehand. The filing will protect your invention by securing a priority date before anyone else can file a competing patent.

b) Research Milestone: When your invention reaches a point where you can confidently describe its novel aspects and practical application, it’s wise to file a provisional application. This is particularly relevant if you’ve made significant progress but still need time to fine-tune or finalize your invention before filing a complete patent.

c) Early Stage of Development: Even if your invention is not fully developed, filing a provisional application allows you to secure a priority date, which can give you valuable time to continue refining your invention. This strategy works well if you anticipate further development but want to ensure your early version of the invention is protected.

Type of application	Cost of application
Provisional Patent application	AU$110
Standard Patent application	AU$370

 

6. International-Type-Search (ITS)

After filing a provisional patent application, applicants may choose to request an International-Type Search (ITS) to check if their invention has any relevant prior art. The fee for this optional search is AU$950.

The ITS search (under Article 15(5)), also assists applicants in determining whether to seek international patent protection through the Patent Cooperation Treaty (PCT) route. This search generates a report listing prior art documents relevant to the invention’s field of technology, offering valuable insights into its patentability prospects. The International-Type Searches are similar to PCT international searches and are conducted under the authority of the Patents Act 1990, and the applicants must request the search within 10 months of filing the Australia patent application.

In Australia, within 12 months of filing a provisional specification, it is essential to submit a complete specification through a standard patent application. A complete specification is a comprehensive document that thoroughly details the invention, including its features, functionality, and scope.

This document plays a crucial role in defining the legal protection granted by the patent. It must contain a clear description, well-defined claims outlining the scope of protection, and any necessary drawings. The complete specification serves as the foundation for enforcing the patent against any infringement. It is crucial to note that, once the application is filed, the complete specification cannot be amended to introduce new subject matter or technical details.

Under Australian IP law, a complete specification is a critical part of any patent application and must meet specific legal standards:

• The invention must be disclosed clearly and comprehensively, enabling a person skilled in the relevant field to perform it.
• The specification must include the best method known to the applicant for performing the invention.
• For standard patent applications, the specification must conclude with clear and succinct claims that define the invention, ensuring they are supported by the material disclosed in the specification.
• Claims must not reference descriptions, drawings, or graphics unless absolutely necessary for defining the invention.
• All claims must pertain to one invention only.

Once the complete application is filed, it is published in the Australian Official Journal of Patents (AOJP) and made available through the Australian Patent Search database.

 

1. Why is it important?

a) Defines Legal Rights: The complete specification is the core of your patent application, as it outlines your invention’s technical details and legal scope. This means it directly influences the enforceability of your patent rights. If someone else tries to make, use, or sell a product that falls within the scope of your patent claims, the complete specification will be used as the primary evidence in any legal disputes. It’s therefore essential that the specification is drafted carefully to cover all possible aspects of your invention that could be commercialized.

b) Description for Patentability: To meet the criteria for patentability, the specification must provide a thorough description of the invention, including its best mode of implementation. This is crucial because the invention needs to be described in sufficient detail so that any person with average skill in the relevant field can reproduce it. Without this clarity, the patent might not be granted, as it would fail the sufficiency of disclosure test. The complete specification also ensures that the invention is novel and involves an inventive step, which are critical for the patent to be valid.

c) Claims: The claims section of the complete specification is the most important part because it defines the boundaries of your legal rights. The claims must clearly describe what the invention protects, and their wording will determine the patent’s enforceability in court. This means that drafting clear and precise claims is essential to avoid future disputes and challenges. Claims that are too broad may be rejected by the patent office, while overly narrow claims might leave the invention exposed to competitors who make small modifications to circumvent the patent.

 

2. How to execute this process with ease?

a) Work with a Patent Attorney: Drafting a complete specification requires expertise in both legal and technical aspects of the invention. It is highly recommended to work with a patent attorney, who will help you frame the claims appropriately and ensure compliance with Australian patent law. A patent attorney will also guide you in ensuring that your description is both accurate and legally enforceable.

2) Best Method Disclosure: When filing a complete specification, it is advised to include the best method of carrying out the invention. This means you must disclose the most effective way to use or implement your invention, as known to you at the time of filing. Failure to include this information could result in the invalidation of your patent if it’s later found that you deliberately withheld information.

c) “One Invention vs Multiple Inventions” per Patent: While it is possible to file multiple inventions in a single patent application to save on initial costs, the claims must still define one invention, as required under Australian law. If the claims cover distinct inventions, some claims may need to be deleted and pursued as a divisional patent. Filing divisional applications can be a useful strategy, allowing flexibility for future filings. However, it is essential to understand the core inventions and develop a well-considered drafting strategy before including them in the specification. Claims should be supported by the description and any necessary drawings, ensuring all aspects of the invention are clearly disclosed and appropriately protected.

Under the Australia IP framework, once a complete application for a standard patent has been lodged, the applicant may request a patent examination. During the examination, the Commissioner will assess whether the application meets the required standards, including compliance with subsections 40(2) to (4) and whether the invention satisfies the patentability criteria under subsections 18(1)(a), (b), and (c).

Application	Fees
Examination request application	$490

 

1. Key considerations for filing a request for examination.

a) To commence examination of a patent application, the applicant must file a request for examination (s 44). If this request is missing, the Commissioner may direct the applicant to request examination under specific conditions (reg 3.16(1)), and if the applicant does not comply within 2 months of the direction, the application will lapse. Alternatively, the applicant may voluntarily request examination within 5 years of filing. If no request is made by then, the application will lapse. Directions may also be issued by a computer program, and incorrect decisions can be substituted by the Commissioner.

b) In Australia, patent applications are typically examined in the order in which requests for examination are filed. However, exceptions exist for cases requiring expedited examination. A request for an expedited examination can be made if the invention serves the public interest or involves special circumstances, such as environmental benefits or commercial urgency.

 

2. What would happen after Expedited examination?

Expedited examination can reduce the examination time from the usual 12-24 months to 4-8 weeks. This speed can provide a significant competitive advantage, especially for industries where being first to market can make or break a business. For inventions that are vulnerable to fast-moving competitors or require immediate protection for investment or production, this option becomes crucial.

 

3. Why Consider Expedited Examination?

a) Immediate Enforcement Needs: If your goal is to quickly enforce your patent rights, an expedited examination could fast-track the entire patent process. By securing a granted patent sooner, you can begin enforcing your exclusive rights, preventing competitors from entering your market space.

b) Investor Pressure: In some cases, having a granted patent can be a key requirement for securing investment. Expedited examination allows you to offer investors more certainty about the legal protection of your invention, which can expedite funding or partnership agreements.

c) Urgency in Production and Market Research: If you’re preparing to launch a product or conduct market research, faster patent protection ensures that your invention is safeguarded against potential competitors who might copy or reverse-engineer your innovation. This provides a critical buffer in the initial phases of production and sales.

d) Licensing Opportunities: Many businesses look to license their inventions, and a patent can make such arrangements more attractive. If you’re seeking to license your invention to third parties, a granted patent gives you a legal foundation on which to negotiate stronger licensing terms. Expedited examination accelerates this process.

However, it’s essential to weigh whether expediting your patent examination aligns with your overall IP strategy. For example, if you’re planning to file for patent protection overseas, expediting your Australian application may not always be advantageous. Once a patent is granted in Australia, it will be published, revealing details of your invention. This publication could impact your eligibility for protection in other countries, especially where first-to-file rules apply, and could jeopardize certain strategic advantages in other jurisdictions.

 

4. Fast Track Options in Australia:

IP Australia also offers special fast-track programs that can be utilized in certain circumstances, providing even more flexibility for applicants:

a) Fast Track for Green Technology: Australia is committed to addressing the global climate crisis, and IP Australia has introduced a green technology fast-track Inventions that help combat climate change, improve energy efficiency, or offer sustainable solutions can benefit from this expedited examination process. This program helps ensure that innovations in environmentally friendly technologies reach the market as quickly as possible, playing a critical role in advancing green tech across industries.

b) Fast Track for SMEs: Australian Small to Medium Enterprises (SMEs) can also apply for SME Fast Track, a streamlined patent process that helps smaller businesses bring their innovations to market faster. SMEs often face financial and competitive pressures and having quick access to patent protection can help them grow, secure funding, or enter partnerships with larger firms.

c) Patent Prosecution Highway (PPH): If you have filed for a patent in another jurisdiction and it has been allowed there, you might be eligible for fast-tracking your Australian patent application through the Patent Prosecution Highway (PPH). This program allows for a quicker examination of corresponding patent applications in Australia, leveraging the work already done by foreign patent offices. This can be especially beneficial for businesses expanding into multiple countries and seeking IP protection in several markets simultaneously.

In the Australia IP system, patent applications often encounter office objections during the examination stage. These objections may arise for several reasons, such as questions regarding the invention’s novelty, inventive step, or failure to meet formal requirements. When objections are raised, applicants are required to reply to office objections by submitting a detailed response, addressing the concerns through arguments, evidence, or necessary amendments to the patent claims or specification.

Why may objections arise?

1. Invention Isn’t New

The most common objection raised by examiners is that the invention is not novel. This means that all or most of the essential features of your claim are already present in previously published documents or patent specifications. If the examiner finds that your invention has been disclosed before:

a) The Examiner’s Citation: IP Australia will provide you with documents or prior art references where your invention (or its key components) has been disclosed. This is known as a citation, and it serves as evidence that your invention is not new.

b) Impact on the Claim: If all the essential features of your claim are found in the citation, your claim is considered not novel, which can prevent you from securing a patent.

How to Address this Objection:

a) Modify the Claim: You may have to amend your claim by including additional features of your invention that were not disclosed in the citation. These features should ideally differentiate your invention and highlight its uniqueness.

b) Argue Novelty: If you believe there is a distinguishing feature in your claim that the citation does not cover, you can attempt to persuade the examiner to withdraw the objection. This involves providing technical arguments to demonstrate how your invention differs from the prior art.

c) Important Consideration: If the examiner finds all the essential features of your invention within the prior art, you won’t be able to obtain a patent for that invention. It’s crucial to review the examiner’s citations carefully and determine the best course of action, whether that’s amending the claims or arguing your case.

 

2. Invention Doesn’t Involve an Inventive Step

Even if your invention is new, the examiner may raise an objection that it lacks an inventive step, which means that your invention is too similar to existing knowledge in the field. IP Australia might determine that your invention does not go far enough beyond existing solutions to warrant a patent. The examiner will provide reasons for this objection along with documents that demonstrate how your invention aligns with common knowledge in the relevant industry or technical field.

How to Address this Objection:

a) Amend the Claims: You can adjust the scope of your claims to emphasize the inventive aspects of your invention. This may involve focusing on specific technical improvements or innovative elements that weren’t obvious to someone skilled in the field.

b) Present Counter-Arguments: If you believe the examiner’s assessment is incorrect, you can present various technical arguments to demonstrate why your invention is inventive and non-obvious. This can include highlighting unexpected results, improvements that were not obvious from the prior art, or differences in functionality or efficiency. You can also argue non-obviousness by showing how your invention solves a long-standing problem in a novel way, introduces a new combination of known elements that yields unexpected benefits, or applies an existing technology in a completely different context.

 

3. Subject Matter of the Patent Can’t Be Patented

Sometimes, the examiner may conclude that the subject matter of your invention isn’t eligible for a patent under Australian law, specifically under Section 18(1)(a) of the Patents Act. This section outlines what constitutes a “manner of manufacture” that is patentable. If your invention falls outside this definition, it would be rejected.

How to Address this Objection:

a) Examine the Nature of the Invention: You need to carefully analyze the claims and see if the invention, as presented, fits within the definition of patentable subject matter. This might involve focusing on the technical or practical application of the invention to show how it satisfies patentability criteria.

b) Redraft Claims: In some cases, you may need to rewrite your claims to ensure they highlight the technical aspects of the invention, rather than abstract ideas or business methods, which are typically not patentable.

 

4. Specification Doesn’t End with a Suitable Claim

An objection may be raised if your patent specification (the written description of your invention) does not end with clear, well-defined claims. Instead, your claims may be too broad, stating objectives or advantages without specifying the technical features of your invention.

How to Address this Objection:

a) Rewrite the Claims: You’ll need to rework your claims to ensure they clearly define the specific features that make up your invention. The claims should be concise and reflect the technical solution your invention provides.

b) Review Objectives and Advantages: Ensure your claims are focused on the features and functions of your invention, rather than the benefits or goals it achieves. This will help you avoid broad, vague claims that don’t adequately define the invention.

 

5. Claims Are Inconsistent or Inadequate

In some cases, the examiner may find that your claims are inconsistent with the invention described in the specification or that they lack adequate support under subsection 40(3) of the Patents Act. For example, you may have stated in the description that a certain feature is essential, but the claims don’t mention that feature.

How to Address this Objection:

a) Ensure Consistency: Go through your claims and specification to make sure they are fully aligned. The claims should reflect every essential feature described in the specification.

b) Amend the Claims: If the objection arises because a key feature is missing in the claims, you can amend the claims to include that feature. This will help you overcome the inconsistency and strengthen the overall application.

 

6. Claims Lack Clarity

Claim clarity is one of the most common objections raised by IP Australia. The examiner may find that your claims are ambiguous, illogical, or inconsistent, making it difficult to understand the scope of the invention.

How to Address this Objection:

a) Refine the Language: You’ll need to carefully review and reword your claims to ensure they are clear, precise, and consistent throughout the application. Avoid using ambiguous terms or technical jargon that could lead to confusion.

b) Ensure Consistency: Make sure that the same words are used consistently across the claims and the specification. This avoids any ambiguity or misinterpretation of the invention’s scope.

 

7. You’ve Claimed More Than One Invention

Sometimes an objection arises because the claims appear to cover more than one invention. Patent law generally requires that each application covers one invention only.

How to Address this Objection:

a) Revise the Claims: Review the claims to ensure that they properly define a single invention. You may need to delete some claims or narrow the scope to focus on one aspect of your invention.

b) Present Counter-Arguments: If you believe the examiner’s assessment is incorrect, you can argue that the claims cover a single invention by showing how they share a common inventive concept or solve the same problem, demonstrating their interrelatedness and unity.

c) File Divisional Applications: If you have multiple inventions and want to protect them all, you can file divisional applications. This allows each invention to be examined separately, ensuring that each one receives appropriate patent protection.

 

Importance of Responding to Objections

Responding to objections during the examination process is a crucial step toward obtaining a granted patent. It provides you with an opportunity to refine your claims and ensure that your invention meets the legal requirements for acceptance.

a) Responding Promptly: You have 12 months (non-extendible) to achieve acceptance after the issuance of the first Examination Report in Australia. Failure to meet this deadline will result in the rejection or abandonment of your application.

b) Strengthening the Patent: By addressing objections, you improve the clarity and enforceability of your patent, making it more likely to stand up to future legal challenges.

Working with a patent attorney is highly recommended, as they can help you navigate complex legal and technical arguments, ensuring that your claims are clear, precise, and meet all patentability requirements.

In Australia’s IP framework, particularly under the Patents Act, the Commissioner is responsible for the examination and acceptance of patent requests and specifications relating to standard patents. The process follows stringent guidelines to ensure that only inventions that meet the necessary patentability requirements are granted protection.

 

1. Conditions for Acceptance (Section 49)

The Commissioner must accept a patent request and its complete specification if, on the balance of probabilities, the following conditions are met:

a) Compliance with Specifications: The specification must meet the formal requirements set out in subsections 40(2) to (4) of the Patents Act. This ensures that the invention is adequately described, clear, and complete enough for it to be performed by someone skilled in the art.

b) Patentability Criteria: The invention must satisfy the essential patentability criteria under section 18(1), including being novel, involving an inventive step, and being useful. Furthermore, the invention must not be excluded under section 18(2), which prohibits patenting of human beings or biological processes for their generation.

If the above conditions are met, the Commissioner will formally accept the patent request. If they are not, the Commissioner has the discretion to refuse acceptance of the request and the accompanying specification.

Once the patent examination process is complete, and if no objections are raised or any objections have been successfully addressed the application is marked as accepted. This signifies that the application has passed all necessary legal and technical checks and is ready to proceed to the next stages of the patenting process.

 

2. Postponing Acceptance (Section 49A)

The acceptance of a patent request can be postponed by the Commissioner, either on their own initiative or at the applicant’s request. When the Commissioner postpones acceptance, a specific date is set by which the request may be reconsidered. The applicant also has the option to withdraw their request for postponement, which would then require the Commissioner to accept or refuse the request within the regular timeframe.

 

3. Refusal of Application or Grant (Section 50)

The Commissioner may refuse to accept or grant a standard patent if the invention is contrary to law. Additionally, if the patent application claims an invention that is merely a mixture of known ingredients for food or medicine, or a process for creating such a mixture, the Commissioner can also refuse to grant the patent.

Furthermore, if a specification includes the name of a person as part of the claimed invention, the Commissioner may refuse acceptance.

 

4. Revocation of Acceptance (Section 50A)

In the patent application process, acceptance signifies that your invention has met all the required standards set by IP Australia and is ready for publication and eventual grant. However, in some exceptional cases, the acceptance of an application may need to be revoked due to errors or new information that comes to light post-acceptance. This situation is governed by Section 50A of the Patents Act.

 

Conditions for Revocation

The Commissioner of Patents may revoke the acceptance of a patent application under the following conditions:

a) No Patent Granted: If the patent has not yet been granted, the Commissioner retains the authority to revoke acceptance. Once the patent is granted, however, revocation under Section 50A is no longer possible.

b) Improper Acceptance: The application should not have been accepted based on the circumstances present at the time of acceptance, even if these circumstances were not known to the Commissioner at the time. For example, new evidence may emerge indicating prior art that was missed during the examination, or a procedural oversight may be discovered.

c) Reasonableness: The decision to revoke must be reasonable, considering all relevant circumstances surrounding the acceptance.

 

Grounds for Revocation

Acceptance may be revoked if there are fundamental issues with the application that should have prevented acceptance in the first place. These include:

a) Relevant Amendments Not Considered: If the application was accepted without considering necessary amendments or submissions that were pending.

b) Wrong Specification or Amendments: Acceptance may have been based on the wrong specification or incorrect amendments.

c) Statutory Provisions Misapplied: If the application was accepted under the wrong statutory provisions or without regard to essential legal standards.

In such cases, IP Australia may choose to revoke acceptance rather than proceed with re-examination, especially when errors are fundamental to the application’s validity.

 

Process of Revocation

Once it becomes evident that an error occurred in accepting the application, the issue must be referred to the Oppositions Division. The power to revoke acceptance rests solely with the Assistant General Manager (Oppositions) or the Supervising Examiner (Oppositions).

a) Referral to Oppositions: The examiner refers the matter to Oppositions, who will assess whether the acceptance was valid or if it should be revoked. In cases where an acceptance is found to be ultra vires (beyond legal authority), the acceptance is considered void, and the application is treated as if it had never been accepted.

b) Correcting the Record: Administrative actions, such as correcting the PAMS (Patent Application Management System) record and adjusting the final date for acceptance, are handled by Oppositions.

c) Opportunity to be Heard: The applicant must be given an opportunity to be heard before revocation can take place. This ensures that the decision to revoke is fair and reasonable.

d) Publication of Corrigendum: If acceptance has already been published, a corrigendum may be issued to notify the public that the acceptance has been revoked.

 

Consequences of Revocation

When acceptance is revoked under Section 50A, several key legal consequences follow:

a) Application Taken as Never Accepted: The application is considered as if it was never accepted. This means that any actions taken based on the acceptance, such as opposition filings or publication of the acceptance, are nullified.

b) Reversion to Examination: The Commissioner must continue to examine the application as if it were still in the examination phase. This allows further objections to be raised, and any necessary amendments to be made.

c) Amendments Revoked: Any amendments granted at the time of acceptance, including leave to amend, are also revoked under regulation 10.6B.

d) Recalculation of Final Date for Acceptance (FDA): The final date for acceptance is adjusted to account for the revocation. According to regulation 13.4(1)(ga), the final acceptance date is extended to the later of:

• • The original final date for acceptance, or
  • Three months from the date that acceptance was revoked.

e) Actions Based on Acceptance Voided: Any further actions, such as advertisement of acceptance or liability for acceptance fees, are voided once acceptance is revoked. Third-party opposition notices are also rendered ineffective.

 

Revocation vs. Re-examination

It is important to note that revocation is not always the preferred course of action. In some cases, IP Australia may choose to conduct re-examination under Section 97 rather than revoke acceptance. Re-examination allows the Commissioner to reassess the validity of the application based on new evidence, such as newly discovered prior art, while avoiding the drastic step of revoking acceptance entirely.

 

Limitations and Discretion of the Commissioner

While the Commissioner holds the authority to revoke acceptance under sec50A, this power is exercised cautiously. Acceptance will generally not be revoked in the following situations:

a) Applicant Requests Revocation: The Commissioner will not revoke acceptance simply because the applicant requests it, for example, to allow for further amendments.

b) Third-party Requests: Revocation cannot be used as an alternative to opposition proceedings. If a third party wants to challenge the acceptance of a patent, they must file a formal opposition.

c) Errors in Quality Review Process: Errors or omissions in the internal quality review process are not generally grounds for revocation unless they involve a fundamental issue affecting the validity of the acceptance itself.

An opposition is a formal challenge to the grant of a patent, filed by someone who believes the patent should not be approved. If no opposition is filed, which happens for most of the patent applications, patent proceeds to grant directly.

What are the specific grounds of oppositions?

Under Section 59 of the Patents Act 1990, a standard patent can be opposed by the Minister or any other individual, but only on specific grounds. These include the  

• Whether the invention meets the requirements for being patentable, and
• If the specification complies with certain legal requirements,
• Entitlement of the nominated person to the patent

Entitlement issues may arise if the nominated person is not the rightful party entitled to the patent, or if they should share the entitlement with someone else, as outlined in Section 33.

• Furthermore, the invention may be challenged if it does not meet the standards of a patentable invention as per Section 18.

The specification of the invention must also align with the compliance rules under Sections 40(2), 40(3), or 40(3A).

 

Process of opposition

• During the process, the opponent presents their case, often supported by evidence and expert opinions, claiming that your patent should be invalid.
• You have the opportunity to respond with your own evidence and arguments.
• The matter is reviewed by a delegate of the Commissioner of Patents, who may hold a hearing to consider both sides. The delegate then makes a decision: i) If the opposition is upheld, you may need to amend your application; ii) If it fails, your patent is granted.
• Both parties have the right to appeal the decision to the Federal Court.

 

How to Respond to an Opposition?

Once an opposition has been lodged, you will receive a statement of grounds and particulars from the opponent. This document outlines the specific reasons why the opposing party believes your patent should not be granted. Along with this, you may receive supporting evidence, which can include expert declarations, documents, or prior art references.

Your response to an opposition will involve gathering and submitting evidence to counter the claims. Here’s a step-by-step guide on how to defend your application:

 

1. Review the Opposition

Carefully examine the statement of grounds and the supporting evidence. You must understand the basis of the opposition to effectively defend your patent. Look for the following:

a) Accuracy of the Claims: Are the objections based on valid prior art or ownership disputes?

b) Technical Challenges: Do the arguments presented misinterpret your invention’s scope or technical merits?

This initial assessment will shape your strategy for responding.

 

2. Assemble Your Evidence

A well-prepared response will be supported by strong, objective evidence. Here are key components you should consider including:

a) Technical Comparisons: If prior art is cited against your application, prepare a detailed comparison demonstrating how your invention differs or presents an inventive step.

b) Inventorship Documents: If ownership is disputed, submit evidence that verifies your claim to the invention, such as lab notes, contracts, or witness testimonies.

c) Expert Declarations: Engage experts who can attest to the novelty, utility, and inventive step of your invention, challenging the opponent’s evidence.

You will have the opportunity to file your evidence in response to the opposition, but strict deadlines apply. Ensure that you adhere to the timelines set by IP Australia.

 

3. Filing Your Response

Your response to the opposition should be filed in the appropriate form, accompanied by your evidence. This is your formal defense and will be considered by the Commissioner of Patents during the opposition proceedings.

How is the Opposition Decided?

The decision-making process involves both parties presenting their case to a delegate of the Commissioner of Patents. The steps involved are:

a) Submission of Evidence: Both you and the opponent will submit your evidence, which will be reviewed by the Commissioner’s delegate.

b) Hearing: Typically, a hearing will be scheduled where both parties can present their arguments. You and the opponent will be given the opportunity to explain your respective positions and clarify any points of contention.

c) Decision: After considering the evidence and hearing both sides, the Commissioner’s delegate will make a ruling. If the opposition is successful, you may be required to amend your application to address any deficiencies. If the opposition is unsuccessful, your patent will proceed to grant.

 

Outcomes and Next Steps

There are a few possible outcomes following the opposition process:

a) Patent Granted: If you successfully defend against the opposition, your patent will proceed to grant.

b) Amendments: In some cases, the opposition may succeed in part, leading to a requirement for amendments to your claims. You will have an opportunity to modify the application to comply with the objections raised.

c) Appeal: If either party is dissatisfied with the decision, they may appeal to the Federal Court. The court will reassess the opposition and evidence and may uphold or overturn the Commissioner’s decision.

 

Strategic Considerations

When responding to an opposition, it’s important to remain proactive and well-prepared. Here are some strategic tips:

a) Engage Professional Help: Defending an opposition requires both legal and technical expertise. Consider hiring patent attorneys or legal experts who specialize in patent opposition proceedings to ensure your response is thorough and effective.

b) Consider Settlement: In some cases, settling the dispute with the opponent may be a better option than a lengthy opposition process. Negotiating terms of settlement could include amending claims or granting a license, which could save both parties time and resources.

c) Withdraw if Necessary: If you assess that the opposition presents insurmountable challenges, withdrawing the application may be a practical option. This will terminate the opposition process, though it also means forgoing the patent rights.

If no opposition is filed or if any opposition is resolved in favour of the applicant, the Commissioner of Patents is required to grant the patent. The patent is officially registered in the Australian Patent Register, and the applicant is notified. The following actions take place during the grant process:

a) Registration in the Patent Register: Details of the patent, including its claims and the inventor’s information, are entered into the Patent Register. This is a publicly accessible record of all granted patents in Australia.

b) Issuance of the Certificate of Grant: The applicant, now the patentee, receives a Certificate of Grant. This certificate serves as the official confirmation of the patent’s grant and contains vital information, including the filing date, patent number, and the title of the invention.

 

1. Validity Period

The standard patent in Australia is valid for 20 years from the date of filing. However, for certain types of inventions, like pharmaceuticals, a patent term extension of up to 5 additional years may be granted.

 

2. Renewal of Patent

To maintain the patent’s validity throughout the 20-year period, the patentee is required to pay annual renewal fees starting from the 4th anniversary of the patent application’s filing date. Timely payment of these fees is crucial, as failure to do so will result in the patent lapsing.

Key Points Regarding Renewal:

a) Annual Payments: Renewal fees are due each year to keep the patent in force. The amount typically increases over time, reflecting the growing commercial potential of the patent as the invention moves closer to market.

b) Grace Period: If renewal fees are not paid by the due date, the patentee is given a six-month grace period during which they can still pay the fees along with a late fee. This prevents immediate loss of patent rights.

c) Monthly Extensions: If the fees are not paid within the grace period, the patentee may apply for further extensions, which are granted on a month-to-month basis. These extensions incur additional fees and are only temporary.

d) Consequences of Non-Payment: Failure to pay the renewal fees within the grace period or extended period will result in the patent lapsing. Once lapsed, the patentee loses all legal rights to the invention, and the patent is no longer enforceable.

e) Restoration of Lapsed Patents: In some cases, a lapsed patent can be restored if the patentee can demonstrate that the lapse was unintentional and that there was no undue delay in taking steps to rectify the situation. Restoration requests must be filed promptly.

 

3. Record-Keeping and Maintenance

The patentee must also ensure that the patent register is kept up to date. This includes:

a) Ownership Transfers: Any changes in ownership (e.g., through sale or assignment) should be recorded in the register.

b) Licensing Agreements: If the patent is licensed to third parties, the details of the licensing agreements should also be recorded.

c) Contact Information: Changes in address or contact details must be updated to ensure timely communication from IP Australia, especially concerning renewal fees and other important matters.

 

4. Enforcement of Patent Rights

Once the patent is granted, the patentee gains exclusive rights to exploit the invention commercially. These rights include the ability to:

a) Prevent Others from Using the Invention: You can take legal action against individuals or companies that infringe on your patent by using, selling, or manufacturing your invention without permission.

b) License the Patent: The patentee may choose to license the invention to others in exchange for royalty payments or other financial benefits.

c) Sell or Assign the Patent: The patent can be sold outright or assigned to another party, transferring the ownership and associated rights.

If infringement occurs, the patentee has the right to file a lawsuit in the Federal Court or relevant jurisdiction to seek remedies, including injunctions, damages, and other legal relief.

 

5. Post-Grant Opposition (Re-Examination)

In some cases, a post-grant opposition or re-examination can be initiated if a third party believes the patent should not have been granted. This may happen after the patent is granted and could result in the patent being revoked or modified if the challenge is successful.

a) Re-Examination: Anyone can request a re-examination of a granted patent if they believe it does not meet patentability criteria. The Commissioner of Patents will review the case, and if substantial grounds are found, the patent may be invalidated or amended.

b) Defending a Re-Examination: As with opposition during the pre-grant phase, the patentee will need to provide evidence to defend the validity of their patent during a re-examination.

 

6. Extension of Patent Term (Optional for Certain Inventions)

For patents in industries like pharmaceuticals, where regulatory approval delays commercialization, a patent term extension of up to 5 years can be requested. This helps compensate for the time lost during regulatory approval processes.

a) Eligibility: Patent term extensions are generally granted for pharmaceuticals and other regulated products that require lengthy approval processes before reaching the market.

b) Application Process: The patentee must apply for the extension before the standard 20-year term expires, demonstrating that the delay in commercializing the product warrants an extended period of protection.