The Patent Application Process

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Patent Search

Although it is not mandatory, we recommend conducting a patentability search before filing a patent application to determine the eligibility of obtaining patent protection for your invention.

Our fees for undertaking a patentability search are $990, including GST.  Also, if you proceed to instruct us to draft your patent application then we put half of the costs, namely $495, towards our usual costs for patent applications.

Provisional Application

Usually the first step in the patent application process is filing a provisional application.

The main purpose of the provisional application is to establish a “priority” date, and provide a basis for a later-filed complete application. The “priority” date is the filing date of the application, and is the date from which your protection begins.

A provisional application is useful in the early stages of an invention to allow the owner time to develop a working prototype of the invention and/or begin manufacturing and marketing the invention, to determine whether it will be commercially viable.  At the same time, the inventor can start to decide whether they will also be seeking patent protection overseas, as patent protection is on a per country basis.

If McIntosh performed your patent search, then our reduced fee for drafting and filing a provisional application, including all government fees and taxes, is $1485. (Otherwise, we charge $1,980.)

Complete Application

In order to maintain the priority date of the provisional application, a complete application must be filed within 12 months from the priority date.  It is at this 12 months stage that some decisions regarding the type of patent protection you seek, and where, should be made if they have not already been made.

In Australia, there are two types of patent protection available – a standard patent or an innovation patent.

Standard patent applications may also be filed in one or more individual foreign countries or in respect of an international patent application.  If so, the patent application will still ultimately need to be examined, accepted and granted in each country it enters in a similar manner as that described below for an Australian patent.

The complete application includes a complete specification which must fully describe the invention and best known method of performing the invention. It must also include claims which define the scope of protection sought for the invention and determine the monopoly which the patent will provide.

Examination

Once the complete application is filed, the application will be examined by IP Australia to assess its eligibility for registration.

For a standard patent, IP Australia will issue a direction to the Applicant to request examination which, must be made within 6 months from the date of this direction.

The application will then be examined and the Examiner will search earlier published documents to determine if the invention is both new and inventive. The Examiner will then issue an Official Report with details of the search, and raise any objections concerning patentability or formality requirements. At this stage of the process the Applicant is given the opportunity to overcome any objections raised by the Examiner.

For innovation patents, IP Australia will only conduct a formalities examination following filing to ensure that the application is in order and all the necessary documents have been provided. As the application does not undergo substantive examination at this stage, innovation patents are generally registered within a month of the application being filed. However, an innovation patent cannot be enforced until after it has undergone substantive examination and the patent has been certified. Substantive examination may be requested at any time after grant by the patentee or a third party.

Acceptance and Grant of the Patent

Once through the examination phase, the application will then be accepted. For a standard patent, the acceptance and details of the patent will be published shortly thereafter, and once published, there is a three month period in which other parties can formally oppose the registration of the application. If there is no opposition, then the application will be granted as a Standard Patent upon payment of the prescribed acceptance fees.

If examination is successful for an innovation patent, the patent will be certified and the patentee will be able to enforce the patent in the same manner as a standard patent.

Term of the Patent

A standard patent can remain in duration for a period of up to 20 years, during which renewal fees will be required to be paid annually, beginning 5 years from the date of filing the complete specification, in order to maintain the patent.

An innovation patent can remain in duration for a period of up to 8 years, with renewal fees beginning 2 years from the registration date and payable annually thereafter.

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