The phrase “Patent Pending” is a common sight on new products or innovations, but what does it truly mean in the context of Australian intellectual property law?
What is Patent Pending?
“Patent pending” refers to the period after a patent application has been filed but before the patent is granted. In Australia, when an inventor files a patent application with IP Australia, the government agency responsible for administering patents, the invention is in a state of “patent pending” until IP Australia completes the examination and determines whether the invention meets the legal requirements for a patent.
The “patent pending” designation can last for several years, depending on the complexity of the examination process and the type of patent being pursued. During this time, the inventor does not yet have the legal rights granted by a patent, but the pending status signals to competitors that an application has been filed, which could result in a patent being granted in the future.
Patent Marking and Its Importance During the Patent Pending Stage
Patent marking is the process of labeling a product to indicate that it is protected by a patent or that a patent application is pending. During the patent pending phase, patent marking plays a crucial role in notifying the public, including potential competitors and infringers, that the product’s design or technology is either patented or in the process of being patented. In the case of an issued patent, the patent number is typically included on the product or packaging. For inventions still under review, the product may be labeled with “patent pending”. While patent marking a product with “patent pending” does not provide immediate legal protection, it warns competitors that a patent application has been filed, and the invention may soon be protected. Proper patent marking is especially important in some jurisdictions, where it directly affects the ability to recover damages in case of infringement. If a product is not properly marked during this period, recovering damages for infringement once the patent is granted can become difficult. Therefore, using patent marking helps secure future legal remedies and discourages unauthorized use of the invention.
Types of Patent Applications in Australia
Before diving deeper into the “patent pending” status, it’s important to understand the types of patent applications available in Australia. There are two primary options:
- Standard Patent: A standard patent provides protection for up to 20 years (or up to 25 years for pharmaceutical patents). The application process involves a thorough examination by IP Australia to ensure the invention meets all legal requirements, including novelty, inventiveness, and utility.
- Innovation Patent: Although Australia phased out new innovation patent applications in August 2021, previously granted innovation patents will remain enforceable until their 8-year term expires. The innovation patent was aimed at providing quicker and cheaper protection for inventions with a lower threshold of inventiveness.
- Provisional Patent Application: This is a cost-effective way to establish an early priority date for your invention. A provisional application does not lead directly to a granted patent but gives the applicant 12 months to file a complete application (either a standard patent or an international application) while benefiting from the earlier filing date. The invention remains in a “patent pending” state during this 12-month period.
The Process of Filing a Patent in Australia
To understand the “patent pending” status, it’s essential to know the process involved in securing a patent in Australia.
- I. Filing the Application
The first step in obtaining a patent is filing a patent application with IP Australia. The application can be for a standard patent or, initially, a provisional application that serves as a placeholder. When the application is submitted, the “patent pending” status begins.
For provisional applications, the inventor has 12 months to file a complete application claiming priority from the provisional application. This time allows the inventor to refine the invention or seek investors while securing an early priority date.
- II. Examination
For standard patents, after filing, the inventor must request examination within 5 years of filing the complete application. The examination is a rigorous process where IP Australia assesses whether the invention meets the statutory requirements for patentability, such as novelty, inventive step, and industrial applicability.
If the examiner raises objections, the applicant must respond with amendments or arguments to overcome those objections. Until this examination is complete, the application remains in a “patent pending” state.
III. Publication
A patent application is published 18 months after the priority date. Once published, the public has access to the details of the invention. Importantly, once the application is published, the inventor gains provisional rights, which may entitle them to reasonable compensation for anyone who uses the invention between publication and grant, assuming a patent is eventually granted.
- IV. Grant or Rejection
If the examination process is successful and all objections are resolved, IP Australia will grant the patent. If the application does not meet the requirements, it may be rejected, or the applicant may withdraw it. If granted, the “patent pending” status ends, and the inventor receives full patent protection.
Importance of the “Patent Pending” Status
While “patent pending” does not confer the full legal protection of a granted patent, it carries significant advantages:
- Market Signaling- Displaying “patent pending” on a product or in marketing materials serves as a warning to competitors that a patent application is underway. This discourages others from copying the invention or developing similar products, as they could face patent infringement issues if a patent is granted.
- Priority Rights- Filing an application establishes a priority date. This is crucial in patent law because patents are generally awarded to the first applicant to file, not the first to invent. The priority date determines the starting point from which IP Australia assesses the novelty and inventiveness of the invention. Any similar inventions disclosed after this date may not be used to invalidate the application.
- Investor Confidence- For startups and individual inventors, having a “patent pending” status can be a powerful tool in attracting investors or partners. It shows that steps have been taken to protect the invention, and there is a possibility of obtaining exclusive rights. Many investors prefer dealing with companies that have a patent or at least a pending application, as it represents the potential for market control.
Limitations of Patent Pending
It’s important to understand that “patent pending” does not provide any enforceable legal rights. While it acts as a deterrent, competitors are not legally barred from making, using, or selling a similar product while the patent is pending. Only once the patent is granted does the inventor have the exclusive right to enforce their patent against infringers. Moreover, if the patent application is ultimately rejected, the invention never receives any legal protection, and any investments in its development might be compromised if competitors can freely use the disclosed information.
Provisional Patent Applications and Their Impact on Patent Pending Status
As mentioned, a provisional patent application is a common first step for inventors in Australia. It allows inventors to secure a priority date without incurring the full costs associated with filing a complete application. However, it’s essential to understand that a provisional application alone does not result in a granted patent. The inventor must file a complete application within 12 months to move the process forward and during this 12-month period, the invention remains in a “patent pending” state.
Patent Pending and Global Protection
Many Australian inventors aim to protect their inventions internationally. Filing a provisional application or a standard patent application in Australia can serve as the basis for international patent protection under the Patent Cooperation Treaty (PCT) or individual country filings. The “patent pending” status in Australia can be leveraged to secure earlier priority dates in other jurisdictions as well.
Conclusion
The “patent pending” status in Australia plays a critical role in the patenting process, signaling to competitors that an application has been filed and securing priority rights for the inventor. While it does not offer the enforceable legal protection of a granted patent, it offers strategic advantages that can bolster market presence and investor confidence. Understanding the nuances of the patent pending period is essential for innovators looking to safeguard their inventions and position themselves for long-term success.
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Together, we can safeguard and enhance the value of your innovations. Our dedicated team of Patent Attorney Australia, and Trademark Attorney Australia specialists can provide expert guidance and support, helping you navigate the complexities of intellectual property law in Australia, New Zealand, India, and beyond.
