Patent Frequently Asked Questions

Patents are a very unique area and are not encountered often by small business owners in Australia. This means there is a common set of questions these inventors have to consider when thinking about filing a patent application.

In this blog, I have answered the most common questions new clients ask me before starting the patent application process.

What is a Patent? 

A patent is an intellectual property right granted for a new invention that is novel and inventive. For the life of the patent, the owner has the exclusive right to commercially exploit the claimed invention within the jurisdiction in which the patent is granted.  

Where do I Start?

The starting point for most inventors is to determine whether your invention is in fact novel.  Simply because you have not seen your product for sale does not mean that it is new,  although that can be a good leading indicator especially if there is a strong need for your invention.

One way of determining the novelty of the invention with more certainty is to have a preliminary novelty search performed by your patent attorney who will often have subscription patent software that can more readily target patent databases to focus in on whether your invention can be patented. This also helps provide a good understanding of the prior art against which your invention will be assessed if you decide to proceed with the patent process. 

In some cases, inventors decide not to have a novelty search done and to proceed directly to filing a patent application. However, this is commonly only the case where the field of the invention is evolving rapidly or where there is potential to immediately license or sell the invention. Unless you have good reason for not doing so, we recommend your first step is to have us perform a novelty search.  This is because the patent process gets progressively more expensive and it is better to know sooner rather than later whether your invention is likely to be patentable or not.

Another common patent search strategy is to file a provisional patent application at IP Australia and then request an International Type Search (Article 15(5) type patent search) which also provides search results and a patent office preliminary patent opinion. This can be an extremely cost effect searching strategy to find out if your invention is patentable and coming from the IP Australia, the Australian patent office, maybe meet the criteria for investors and other stakeholders.

I believe my Invention is Novel and Inventive, what’s The Next Step?

If novelty searches show that your invention is novel and inventive, the next step is to file a patent application.  Filing a patent application secures the priority date for your invention and essentially locks in the date on which your patent will be assessed for novelty and inventive.  There are two types of patents you can file in  Australia. These are a provisional patent application and a standard patent application.  

Australia used to have a third type of patent called an innovation patent application however these have been phased out and can only be filed in limited circumstances (contact us if you want to know more or read this blog). 

It is also possible to file a Patent Cooperation Treaty Application (PCT Application) which is an international application that provides patent-pending status in about 152 countries worldwide.  

A provisional patent application is the normal starting point and is valid for 12 months after which you have to file a standard patent. During these 12 months, inventors typically develop and improve their inventions and the improvements are captured in the standard or innovation patent that is subsequently filed. You can of course file a standard patent without filing a provisional patent application however this typically involves spending more money upfront and does not give you the opportunity to incorporate amendments and product improvements.  

An Australian patent is valid in Australia only so if you want patent protection overseas you will need to file a patent in that overseas country. Your Australian Patent Attorney can assist you in filing your patent overseas and assist you in deciding which type of patent to file in Australia.   

What if I Decide Not to File a Patent Application?

Unless you patent your invention, anyone can use it for free. A famous example of this is the electrical power board invented by Kambrook in 1972. Kambrook decided not to patent the idea and lost millions in revenue when other manufacturers were able to copy the hugely successful invention without having to pay a royalty.  

Can I Tell Other People About My Invention Before I File A Patent Application?

You should not disclose or commercialise your invention before filing a patent application. If you do so you risk losing any protection you may have been able to secure. A grace period is available in some countries, including Australia, for self-disclosure so depending on the date of disclosure you may still be able to file a valid patent application (although it is best not to rely on grace periods as each country has different requirements and grace periods). Contact us if you think you may need to use a grace period to file a patent application for your invention that was disclosed prior to filing. 

Why Should I Use IP Guardian?

Ultimately, only a small number of “do-it-yourself” applications are successful. Most are abandoned due to insufficient knowledge of the application process or requirements. Professional advice is therefore essential for the desired outcome.

IP Guardian Patent and Trade Mark Attorneys offer fixed-fee pricing for most of the patent process so you can plan your commercialisation strategy.  

Please contact us for a free and confidential no-obligation consultation on your patent needs.

Barry Meskin

Principal Patent and Trade Mark Attorney

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Barry Meskin

Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.