Patent Attorneys | Sydney | Australia

What is a patent?

A patent is an exclusive right granted to the owner of an invention to commercially exploit the invention.

The patent owner may give permission to, or license, other parties to use the invention on mutually agreed commercial terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent.

Once a patent expires, the exclusive rights / protection ends, and an invention enters the public domain, then anyone can freely commercially exploit the invention without seeking permission or a licence.

What rights does a patent provide?

For the duration of the patent, its owner has the right to decide who may use and commercially exploit the invention, and how it is used / commercially exploited.

In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner's consent.

What kinds of Inventions can be protected?

Patents may be granted for inventions in any field of technology, from an everyday kitchen tool to a nanotechnology chip.

An invention can be a product such as a physical product or chemical compound, or a process, for example a process for producing a specific chemical compound, or an improvement to an existing product or process.

A product may contain more than one invention, for example, a laptop computer can involve several inventions working together where each invention maybe patented independently of the others.

How long does patent protection last?

Patent protection is granted for a limited period, generally 20 years from the filing date of the patent application.

In Australia we have a standard patent that generally has a maximum term of 20 years.

Is a patent valid in every country?

Patents are national territorial rights.

In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.

If patent protection is required in a given country then a patent application in that country will be required.

How are patent rights enforced?

Patent rights (like other legal rights) are usually enforced in a court by the patent owner.

The obligation for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.

What is a patent license, and why license a patent?

A patent license is a contract where the patent owner grants permission to another individual/organisation to make, use, sell etc., ie commercially exploit a patented invention.

The commercial exploitation under the license takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time as stipulated in the license.

A patent owner may grant a license to a third party for many reasons.

For example the patent owner may not have the means or desire to make and commercially exploit the invention and chooses to allow others to make and sell the patented invention in return for “royalty” payments under a license agreement.

Alternatively, a patent owner may not have the means to cover market demand and may choose license the patent to one or more persons/organisations in one or more countries building mutually beneficial business relationships while establishing income streams under one or more licenses.

Unlike selling or transferring a patent to another party, a license does not transfer ownership of the patent but merely provides legal rights to use the invention according to the terms of the license.

Why are patents useful to the community and economy?

Patents provide a legal and commercial monopoly of an invention to the owner of the patent thus providing an incentive to ongoing private development of new inventions which benefit society as a whole.

A granted patent requires a public disclosure of the invention and once knowledge is publicly available, by its nature, it can be used by others to make further developments of new inventions which also benefit society as a whole.

These incentives and the dissemination of knowledge about new inventions encourage further innovation, which assures that the quality of human life and the well-being of society is continuously enhanced.

What conditions must be met to obtain patent protection?

The conditions that must be met in order to obtain a patent is determined under the laws of each country however generally the following conditions apply:

• The invention must be novel, that is include some new characteristic which is not known in the body of existing knowledge (the "prior art") in its technical field.
• The invention must involve an "inventive step" or "non-obvious", which means that it could not be obviously deduced by a person having ordinary skill in the relevant technical field.
• The invention must be capable of industrial application, meaning that it must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon, or be useful.
• It's subject matter must not be expressly excluded form being "patentable" under the law of the country where a patent is sought.
• The invention must be disclosed in a patent application in a manner sufficiently clear and complete to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field.

How much does it cost to patent an invention?

Pursuing a patent is a process that can be achieved by various search and filing strategies.

Costs can vary considerably from case to case, country to country and is subject to the search and filing strategy that is adopted and pursued which can have a significant impact on costs or when costs are incurred in the patent process.

Therefore an answer to "how much does it cost to patent an invention?" is arbitrary and without context until the question is qualified with at least a stipulated search and filing strategy that meets your requirements.

some costs

Costs for budget planning purposes can be provided once a search and filing strategy that meets your requirements has been formulated in consultation with you however in the mean time the order of magnitude of some costs are provided in the follwing table for reference.

Provisional application | Australia

Applicant's Details

• the full legal name and address of each person, company or other legal entity in whose name the application is to be made (note the applicant does not have to be an inventor and in that case the applicant must have legal entitlement to the invention);
• the Australian company number (ACN), or the Australian registered body number (ARBN), if relevant for any company that is an applicant;
• in the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.

Inventor's Details

• the full legal name and address of each person who is an inventor (ie each person that materially contributed to the invention);
• an inventor can only be a natural person.

Patent Specification and Drawings

• a copy of the patent specification in English including drawings (if any);
• the specification preferably in Microsoft word format;
• the drawings preferably in .dwg format or PDF format;
• alternatively sufficient detail about the invention for us to prepare a patent specification and drawings in accordance with the following guidelines.

Guidelines

• please please provide a full description of how the invention works and is used, including simple drawings which may help us understand the invention;
• if the description includes terms of the art please provide a brief explanation of the terms/jargon;
• please provide a set of good quality drawings to accompany your full description (without borders, titles, dimensions or any text) presented on A4 paper and/or presented as an electronic copy for reproduction or further manipulation (preferably in a *.dwg format or *.pdf format);
• please answer the following questions as best you can and while some of the information may be self-evident from the information you provide in your full description your answers may be of further assistance;

1. why was the invention developed?
2. is the invention a product/device or a method/process?
3. what prior art is the most similar to the invention? Please provide any references or pictures/drawings or any other information that you may have about the prior art.
4. does the invention overcome specific problems with or in the prior art? If so what problem(s) does it overcome and what features in the invention provide that/those advantage(s)?
5. does the invention provide other advantages over the prior art? If so, what feature(s) in the invention provide those other advantages?
6. which features do you consider to be the potentially most commercially valuable important aspects of the invention?
7. in a sentence describe the technical field the invention belongs to? For example ‘the invention relates to a new method of making plastic pipes’ or ‘the invention relates to a paint additive to help the paint dry quicker when applied to a surface’.
8. is the invention fully developed or some further development needs to be completed? If so please specify what further developments need to be completed or are likely to be undertaken.

Power of Attorney

• An executed power of attorney is not required.

Complete application for a standard patent | No Priority | Australia

The same filing requirements as a Provisional Application as provided above apply, plus:

Claims, Abstract

• a copy of the claims in English to accompany the patent specification;
• the claims preferably in Microsoft word format;
• alternatively sufficient detail about the invention for us to prepare suitable claims in accordance with the guidelines provided above.

Convention application | Australia

The same filing requirements as a Complete Application for a Standard or Innovation Patent | No Priority as provided above apply, plus:

Filing Time Limits

• The time limit to file the application and validly claim priority from an eligible first application is +12 months from the filing date of the first application.

Foreign Priority Documents

• A certified copy of the foreign priority document if requested by the patent office.

English Translations

• A verified English translation of the priority document if requested by the patent office.

Entering national phase of a PCT application | Australia

Filing Time Limits

• The time limit to enter national phase of a PCT application under chapter I / chapter II is +31 months from the priority date.

PCT Details

• Full identification details of the PCT application;
• A copy of the front page of the PCT application as published by WIPO however a copy of the entire application would be preferable;
• Full details and particulars of any Article 19 and Article 34 amendments made during the international phase as applicable.

English Translations

• If the International application is not in English then a verified English translation of the international application is required to be filed with the request to enter national phase;
• If any amendments (Article 19, 34) were made during international phase that were made not in English then English translations including any article 19 statement must be filed with the request to enter national phase.

Power of Attorney

• An executed power of attorney is not required.

PCT Application | Australia

The same filing requirements as a Convention Application for a Standard Patent as provided above taking into account the following eligibility criteria.

Eligibility to File

• A PCT application can only be filed through the Australian patent office by Australian nationals or residents;
• Non-Australian residents can file a PCT application through our office with the PCT international bureau however non-Australian resident applicants must be a resident or national of a PCT contracting State.

Provisional application | New Zealand

Applicant's Details

• the full legal name and address of each person, company or other legal entity in whose name the application is to be made (note the applicant does not have to be an inventor and in that case the applicant must have legal entitlement to the invention);
• the New Zealand company number if relevant for any company that is an applicant;
• in the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.

Inventor's Details

• the full legal name and address of each person who is an inventor (ie each person that materially contributed to the invention);
• an inventor can only be a natural person.

Patent Specification and Drawings

• a copy of the patent specification in English including drawings (if any);
• the specification preferably in Microsoft word format;
• the drawings preferably in .dwg format or PDF format;
• alternatively sufficient detail about the invention for us to prepare a patent specification and drawings in accordance with the following guidelines.

Guidelines

• please please provide a full description of how the invention works and is used, including simple drawings which may help us understand the invention;
• if the description includes terms of the art please provide a brief explanation of the terms/jargon;
• please provide a set of good quality drawings to accompany your full description (without borders, titles, dimensions or any text) presented on A4 paper and/or presented as an electronic copy for reproduction or further manipulation (preferably in a *.dwg format or *.pdf format);
• please answer the following questions as best you can and while some of the information may be self-evident from the information you provide in your full description your answers may be of further assistance;

1. why was the invention developed?
2. is the invention a product/device or a method/process?
3. what prior art is the most similar to the invention? Please provide any references or pictures/drawings or any other information that you may have about the prior art.
4. does the invention overcome specific problems with or in the prior art? If so what problem(s) does it overcome and what features in the invention provide that/those advantage(s)?
5. does the invention provide other advantages over the prior art? If so, what feature(s) in the invention provide those other advantages?
6. which features do you consider to be the potentially most commercially valuable important aspects of the invention?
7. in a sentence describe the technical field the invention belongs to? For example ‘the invention relates to a new method of making plastic pipes’ or ‘the invention relates to a paint additive to help the paint dry quicker when applied to a surface’.
8. is the invention fully developed or some further development needs to be completed? If so please specify what further developments need to be completed or are likely to be undertaken.

Authorisation Of Agent

• An authorisation Of agent form is not required in order to complete a filing.
• An authorisation of agent form is required, if an agent is appointed after filing the application or in cases when there is a change agent after filing the application.

Complete application for a standard patent | No Priority | New Zealand

The same filing requirements as a Provisional Application as provided above apply, plus:

Claims, Abstract

• a copy of the claims in English to accompany the patent specification;
• the claims preferably in Microsoft word format;
• in the case of an innovation patent application the maximum number of allowable claims is 5;
• alternatively sufficient detail about the invention for us to prepare suitable claims in accordance with the guidelines provided above.

Convention application | New Zealand

The same filing requirements as a Complete Application for a Standard Patent | No Priority as provided above apply, plus:

Filing Time Limits

• The time limit to file the application and validly claim priority from an eligible first application is +12 months from the filing date of the first application.

Foreign Priority Documents

• A certified copy of the foreign priority document which can be filed later with a late fee.

English Translations

• A verified English translation of the priority document if requested by the patent office.

Entering national phase of a PCT application | New Zealand

Filing Time Limits

• The time limit to enter national phase of a PCT application under chapter I / chapter II is +31 months from the priority date.

PCT Details

• Full identification details of the PCT application;
• A copy of the front page of the PCT application as published by WIPO however a copy of the entire application would be preferable;
• Full details and particulars of any Article 19 and Article 34 amendments made during the international phase as applicable.

English Translations

• If the International application is not in English then a verified English translation of the international application is required to be filed with the request to enter national phase;
• If any amendments (Article 19, 34) were made during international phase that were made not in English then English translations including any article 19 statement must be filed with the request to enter national phase.

Authorisation Of Agent

• An authorisation of agent form is not required in order to complete a filing.
• An authorisation of agent form is required, if an agent is appointed after filing the application or in cases when there is a change agent after filing the application.

PCT Application | New Zealand

The same filing requirements as a Convention Application for a Standard Patent as provided above taking into account the following eligibility criteria

Eligibility to File

• A PCT application can only be filed through the New Zealand patent office by New Zealand nationals or residents;
• Non New Zealand residents can file a PCT application through our office with the PCT international bureau however non New Zealand resident applicants must be a resident or national of a PCT contracting State.

Standard Patent | Max Term 20 Years

Annual Fees

• Annual national continuation or renewal fees apply, the first due before the 4^th anniversary of the filing date of the patent application and then due before every anniversary thereafter until the last which falls due before the 19^th anniversary.

Late Renewal | Risks

• Continuation / renewal fees can be paid up to a maximum 6 months after they fall due (the renewal grace period) but must be accompanied by an additional monthly late fee for each month, or part of a month after the due date.
• The actual lapsing of an application/patent does not occur until the expiry of this 6 month renewal grace period but the lapsing of the application is backdated to the date it was originally due.
• Please note there is a risk associated with late renewals and it is recommended that renewals are paid good time before they fall due.

Patent for a Pharmaceutical Substance | Maximum Term 25 Years

The same renewal requirements, grace periods and late payment risks provided above for a standard patent also apply to a standard patent for a pharmaceutical substance.

Extension of Term

If an extension to the term of the patent (extension to a maximum term of 25 years) is sought and granted because the relevant patent is for a pharmaceutical substance then annual renewal fees are payable up until before the 24^th anniversary of the filing date of the patent.

Innovation Patent | Maximum Term 8 Years

Annual Fees

Annual national continuation or renewal fees apply, the first due before the 2^nd anniversary of the filing date of the patent application and then due before every anniversary thereafter until the last which falls due before the 7^th anniversary.

Late Renewal | Risks

Continuation / renewal fees can be paid up to a maximum 6 months after they fall due (the renewal grace period) but must be accompanied by an additional monthly late fee for each month, or part of a month after the due date.

The actual lapsing of an application/patent does not occur until the expiry of this 6 month renewal grace period but the lapsing of the application is backdated to the date it was originally due.

Please note there is a risk associated with late renewals and it is recommended that renewals are paid good time before they fall due.

Divisional Application for a Standard or Innovation Patent

Date of Patent

The renewal time limits in the case of divisional patent applications is referable to the “date of the patent” and not the filing date of the divisional application. The “date of the patent” in the case of a divisional application is the filing date of the earliest parent application in the preceding chain of applications that led to the divisional.

Annual Fees

Annual national continuation or renewal fees apply in accordance of the type of patent sought by the divisional application.

In the case of a divisional that is a standard patent then the same renewal requirements, grace periods and late payment risks provided above for a standard patent also apply to the divisional application except the renewal time limits are referable to the date of the patent and not the filing date of the divisional application.

In the case of a divisional that is an innovation patent then the same renewal requirements, grace periods and late payment risks provided above for a innovation patent also apply to the divisional application except the renewal time limits are referable to the date of the patent and not the filing date of the divisional application.

Patent of Addition

Before Grant of the Patent of Addition

Before a patent of addition is granted the same renewal requirements, grace periods and late payment risks provided above for a standard patent also apply to application for a patent of addition, ie the application should be maintained like a normal standard patent by paying annual maintenance fees before the 4^th filing anniversary of the parent.

After Grant of the Patent of Addition

Once a patent of addition is granted, annual maintenance fees are not required on the patent of addition. However, once granted the parent application needs to be maintained for the patent of addition to remain in force.

Once the parent patent ceases, so does the patent of addition.

Standard Patent | Filed on after 13 September 2014 | Maximum Term 20 Years

Annual Fees

These patent applications are governed by the Patent Act 2013. Annual national continuation or renewal fees apply, the first due before the 4^th anniversary of the filing date of the patent application and then due before every anniversary thereafter until the last which falls due before the 19^th anniversary.

The annual fees can be paid up to 3 months before they fall due.

Late Renewal | Risks

Continuation / renewal fees can be paid up to a maximum 6 months after they fall due (the renewal grace period) but must be accompanied by an additional monthly late fee for each month, or part of a month after the due date.

The actual lapsing of an application/patent does not occur until the expiry of this 6 month renewal grace period but the lapsing of the application is backdated to the date it was originally due.

Please note there is a risk associated with late renewals and it is recommended that renewals are paid good time before they fall due.

Standard Patent | National Phase of PCT | National Phase on or after 13 September 2014 | Maximum Term 20 Years

These patent applications are governed by the Patent Act 2013. The renewal requirements, grace periods and late payment risks provided above for a standard patent filed on after 13 September 2014 also apply to these national entry cases.

Standard Patent | Filed before 13 September 2014 | Maximum Term 20 Years

Annual Fees |Transitional Provisions

Patent applications filed before 13 September 2014 ('old act cases') were filed under the Patent Act 1953 (the old act). Under the old act no national continuation fees applied to old act cases prior to grant however after grant a renewal fee would fall due before the 7^th filing date anniversary, 10^th filing date anniversary and 13^th filing date anniversary.

Under the current act transition provisions apply to old act cases and annual renewal fees now apply to old act cases but will not start to apply to an old act case until a renewal calculated under the old act for that old act case falls due.

For example if a patent was granted 25 March 2015 pursuant to a patent application filing date of 10 January 2012 then it would be an old act case. Once this old case is granted the first applicable renewal fee calculated under the old act would fall due before 10 January 2019 (the 7^th anniversary of the filing date). Under the current act transition provisions annual renewal fees would not commence to be payable until 10 January 2019.

Renewal fees can be paid up to 3 months before they fall due.

Late Renewal | Risks

Continuation / renewal fees can be paid up to a maximum 6 months after they fall due (the renewal grace period) but must be accompanied by an additional monthly late fee for each month, or part of a month after the due date.

The actual lapsing of an application/patent does not occur until the expiry of this 6 month renewal grace period but the lapsing of the application is backdated to the date it was originally due.

Please note there is a risk associated with late renewals and it is recommended that renewals are paid good time before they fall due.

Divisional Application for a Standard Patent

Date of Patent

The renewal time limits in the case of divisional patent applications is referable to the “date of the patent” and not the filing date of the divisional application. The “date of the patent” in the case of a divisional application is the filing date of the earliest parent application in the preceding chain of applications that led to the divisional.

That is if a continuation | renewal fee applies to a parent application | patent then the same continuation | renewal fee and time limit will also apply to the divisional application.

Renewal Fees - Parent Applications Having Filing Date on after 13 September 2014

The applicable renewal fees and late renewal provisions that apply is the same as the renewal requirements provided above for a standard patent filed on or after 13 September 2014.

Renewal Fees - Parent Applications Having Filing Date before 13 September 2014

The applicable renewal fees and late renewal provisions that apply is the same as the renewal requirements provided above for a standard patent filed before 13 September 2014.

Patent of Addition

Before Grant of the Patent of Addition

Before a patent of addition is granted the same renewal requirements, grace periods and late payment risks provided above for a standard patent also apply to application for a patent of addition, ie the application should be maintained like a normal standard patent application by paying annual maintenance fees before the 4^th filing anniversary of the parent.

After Grant of the Patent of Addition

Once a patent of addition is granted, annual maintenance fees are not required on the patent of addition. However, once granted the parent application needs to be maintained for the patent of addition to remain in force.

Once the parent patent ceases, so does the patent of addition.