Patent Pre-Filing Considerations

Protecting an innovation in Australia begins long before a patent application is drafted or filed; it starts with a confidential and strategic engineered pre-filing process that determines whether exclusive rights can ever be secured. In a patent system governed by the Australian Patents Act 1990 (Cth) and shaped by an increasingly sophisticated body of Federal Court jurisprudence, the earliest decisions- how an invention is documented, how it is disclosed, how prior art is assessed, and how improvements are captured, can decisively influence novelty, inventive step, and long-term enforceability. With competition accelerating across sectors such as telecommunications, advanced manufacturing, software, and clean energy, even a single enabling disclosure, unexamined competitor patent family, or inadequately prepared provisional specification can permanently undermine both Australian and global protection. A rigorous pre-filing strategy, grounded in legal precision and commercial foresight, is therefore essential to preserving the value, defensibility, and competitive advantage of technological innovation in Australia.

Section 18 of the Patents Act 1990 (Cth) defines that a invention for a standard patent is patentable in Australia if the invention meets criteria viz. manner of manufacture, novel, innovative step, useful and not secretly used before priority date of the application.

• Manner of Manufacture- The invention must be a “manner of manufacture” in the traditional sense, meaning it must be a physical product, a process, a machine, or a substance that can be used or made in an industry. This generally excludes abstract ideas, mathematical models, artistic creations, and purely mental processes.
• Novel and Inventive Step- When compared with the prior art base as it existed before the priority date of that claim, the invention must be novel and involve an innovative step.
• Utility: The invention must be useful i.e., industrially applicable.                  
• (The invention was not secretly used in the patent area before the priority date of that claim.

To meet the above requirements, a strategic and thorough patent search is an essential first step of any pre-filing strategy. Patent search is not merely an administrative formality and is rather a primary tool for determining whether an invention can meet the stringent requirements of Section 18. A well-conducted patent search reveals the true state of the prior art, clarifies whether novelty and inventive step are genuinely present, and exposes potential secret uses or earlier disclosures that could invalidate a future patent. While no one knows the technical nuances of the invention better than the inventor, a professional search extends beyond simple keyword queries, classification based search, legal interpretation of claim scope, and cross-jurisdictional analysis, providing the inventors with invaluable insights of existing landscape of technology and intellectual property. This depth of patent search ensures that the invention enters the patent system on a foundation of accuracy, confidence, and legal compliance.

The primary purpose of the patent search is to determine if the invention meets the fundamental criteria of patentability in Australia, namely novelty and inventive step. An invention is novel only if it has not been publicly disclosed anywhere in the world, whether in a patent, a journal article, presentation, or through prior use or sale. By identifying similar or identical disclosure, products and technologies early, one can avoid significant time and financial costs of pursuing an application that is likely to be rejected.

The patent search is also an essential tool for conducting a freedom to operate or an infringement analysis. Even if the invention is novel, it may still infringe an existing, valid patent. In Australia, since a standard patent is enforceable for up to 20 years, assessing infringement risk is essential before commercialization. Conducting a prior art search can be complex, as it requires a deep understanding of claims scope and the ability to search across multiple free and paid databases.

Furthermore, the patent search offers market analysis and competitor insights. By reviewing granted patents and published applications, one can gain a deeper understanding of competitors’ products, their R&D focus area, and their future business strategies. This information can reveal what they have already protected, as well as what they have not. These “white space” opportunities often represent the most commercially advantageous areas for new patent filings, improvements, or alternative designs.

A patent search can reveal new technological gaps, great ideas, or novel uses of existing technologies that are not covered by any current patent claims. The freedom to operate search allows to commercialize an unpatented idea or even improve upon a competitor’s technology and patent your own improvement. This not only strengthens the market position but can also create new sources of revenue through licensing or commercialization of unique intellectual property.

A comprehensive patent search also identifies patent ownership, which is crucial for due diligence in commercial transactions or for a potential license agreement. It can also reveal whether a patent has been mortgaged, which is vital for any party seeking to acquire or license the technology. In some cases, a patent search may reveal prior art missed by an examiner, which can be leveraged to challenge or narrow a competitor’s patent. These insights underscore why a professionally conducted patent search is an indispensable first step of any effective intellectual property strategy.

Pre-Filing Risks

Even with a promising search result, the validity and enforceability of a patent can be compromised by careless pre-filing conduct. The most significant risks arise from prior disclosure and prior use. Any public written disclosure- journal papers, conference presentations, investor decks, or online posts, can render an invention unpatentable if it enables a skilled person to perform the invention without additional inventive effort. It is the “enabling” nature of the disclosure, not its mere existence, that is determinative. For example, in Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd, the Full Federal Court of Australia found that a published clinical trial protocol, which merely hypothesized the administration of a drug, was considered a clear and unmistakable direction sufficient to defeat a later patent claim. This stands in contrast to other jurisdictions, which might require the actual achievement of a therapeutic effect.

Similarly, prior public use, where an invention is made available in a non-confidential setting, can defeat novelty. This is particularly relevant when the public use enables a skilled person to understand and replicate the invention. However, Australian law also has a unique and powerful provision related to “secret use”. Under Section 18(1)(d) of the Patents Act 1990 (Cth), an invention is not patentable if it was secretly used in the patent area for a commercial purpose before the priority date. The landmark case of Azuko Pty Ltd v Old Digger Pty Ltd solidified this principle, holding that supplying prototypes to a contractor for commercial use constituted secret use, even if the use was non-public. The critical factor is whether the use conferred a commercial benefit on the patentee, regardless of confidentiality. While experimental use is a recognized exception, its threshold is narrow; it must be for testing the invention, not commercial gain.

Filing Strategy

Our strategic guidance extends beyond pre-filing risk assessment to a type of patent application specification, whether provisional or non-provisional. A provisional patent application is often an ideal first step, offering a cost-effective way to secure an early priority date. The provisional patent application provides grants 12-months to refine the invention, engage with investors to seek funding or test the market. For inventors actively engaged in research, filing a provisional application can be invaluable, allowing to secure the earliest possible priority date. However, this strategy requires careful management, as a defective priority claim can weaken or invalidate a later patent.

Self-filing a patent application by the innovator has few inherent risks. For instance, disclosing an invention before filing a provisional application or failing to fully describe an invention in a provisional application, can create prior art against own invention, potentially preventing obtaining of patent rights entirely. While a 12-month grace period exists in Australia, it is a limited safeguard and does not apply in many other countries. A public disclosure after filing a provisional application is equally risky if the disclosure includes aspects of the invention not sufficiently described in the provisional application.

Drafting a Patent Specification

Drafting a patent specification is most critical and technically demanding stage in the entire process. As recognized by the US Supreme Court in the case Topliff v. Topliff, 145 US 156 (1892), it is one of the “most difficult legal instruments to draw with accuracy.” A poorly drafted specification, whether by the inventor or an inexperienced practitioner, can lead to a patent that is either impossible to enforce or easily circumvented by the competitors.

Patent drafting process needs to be performed while focusing on several key legal requirements to build a defensible document. The sufficiency of disclosure requirement is paramount and under Australian law, the patent specification must be “clear enough and complete enough for the invention to be performed by a person skilled in the relevant art” without undue experimentation. This means providing sufficient detail to enable the invention across the full scope of the claims, not just a single embodiment. Failure to meet this requirement can lead to a severely reduced scope of protection or even outright revocation of the patent. Case law, such as Thanh Tri Lam [2024] APO 52 illustrate the consequences of inadequate disclosure, where a self-filed application was revoked for failing to meet the sufficiency requirement.

Patent specification must not include overly limiting statements and must incorporate effective fallback positions. The claims must be drafted so as to restrict the competitors to design around the invention. The patent specification must proactively include a multitude of fallback embodiments, so that if a broader claim is challenged by new prior art, we have a clear, supportable path to a narrower, but still valuable, claim. This strategic foresight is what separates a strong patent from a weak one.

Why Choose Our Firm to File Your Patent?

The complexities of Australian and international patent law, from navigating obscure legal precedents on secret use to drafting a legally bulletproof specification, highlight the immense value of professional assistance. We provide this crucial service to help the innovators navigate the complexities of the Australian patent landscape and build a strong, defensible pathway toward obtaining enforceable patent rights. Numerous Patent Office decisions confirm that self-filed applications commonly fail due to unclear claims, insufficient disclosure, or unsupported amendments. For example, in Salim Abdul-Malik [2022] APO 54, the Applicant’s claims were found to be both unclear and non-patentable subject matter, while in  Grahame Smith [2020] APO 21, the Applicant’s attempts to amend their self-filed application to add crucial information were refused, leading to the revocation of their patent.

Engaging our firm from the beginning of your innovation journey could save you significant money, time, and effort. We partner with you not just to file a document, but to build a comprehensive intellectual property strategy. Our expertise in conducting thorough searches, preparing meticulous specifications, and managing the entire prosecution process ensures that your valuable innovation is protected by a defensible and commercially viable patent. We are committed to guiding you through every step, transforming your invention from a concept into a protected asset with a clear commercial future.

Contact us today for a free consultation.