Important things you need to know about patentability and the patent process

The patent system is a legal framework that allows inventors to protect their inventions for a certain (limited) period of time. This gives them exclusive rights to prevent others from making, using, or selling the invention without their permission. In return, the inventor must disclose the details of the invention to the public, so that others can learn from it and build upon it.

In explaining patents and how they work, we believe it is important to understand why the patent system exists at all. Patents are monopolies and governments don’t like granting monopolies to people, as it goes against free trade and consumer choice. So why do they allow patents to be granted? 

Well the idea is that during the patent process, patent applications are published, so that new and inventive technology is disclosed to the public. The public can, in turn, develop new and inventive improvements on this technology and file patent applications to these improvements. In this way, the development of technology is incentivised and the rate of development is increased.

This is also where the main requirements for patentability come from - in order to be patentable, the technology must be new and inventive. For an explanation for what this means, please see this link. 

The process of obtaining a patent typically starts with the filing of a provisional patent application. This is a relatively simple and inexpensive way to establish an early effective filing date for an invention, and to buy some time to conduct further research and development or to seek funding. A provisional patent application provides the inventor with "patent pending" status, which can be used to deter others from copying the invention. However, it is important to note that a provisional patent application is not examined and it will not mature into an issued patent unless a non-provisional application is filed within 12 months.

The next step is to file a non-provisional application, which is a more formal and complete application that includes a detailed description of the invention, claims, and drawings. The non-provisional application is then examined by the patent office to determine if it meets the legal requirements for patentability, such as novelty, non-obviousness (or inventiveness), and usefulness.

Non-provisional patent applications can be filed through the Paris Convention for the Protection of Industrial Property (the “Paris Convention”). The Paris Convention is an international treaty established in 1883 and is one of the oldest intellectual property treaties. The Paris Convention provides for several key principles for the protection of patents and other forms of industrial property, such as national treatment, which requires that each member country provide the same level of protection to foreign inventors as it does to its own citizens, and priority rights, which allows inventors to file a patent application in one country and then file in other countries within a certain period of time and claim the same priority date.  

Non-provisional patent applications can be filed directly into the patent offices of overseas countries using the Paris Convention within 12 months of the filing date of the earliest patent application.

If the inventor wants to seek patent protection in multiple countries, another option is to use the Patent Cooperation Treaty (“PCT”) system. The PCT allows inventors to file a single “international” or PCT patent application, instead of having to file separate applications in each country where they want protection. The PCT application is then processed by a central international organization, the World Intellectual Property Organization (WIPO), which examines the application to ensure it meets certain formal requirements. The PCT currently has 157 member countries. A list of them can be found here:

https://www.wipo.int/pct/en/pct_contracting_states.html

Filing a PCT application delays the deadline for filing non-provisional patent applications by a further 18 or 19 months (giving inventors a total of 30/31 months in which to commercialise their invention before committing to filing in overseas countries). When a PCT application is filed an International Search and Written Opinion on patentability is automatically carried out by WIPO. This search gives the inventor some clarity on whether the invention is patentable before they commit to filing in overseas countries.   

After the PCT application is filed, the inventor can “enter the national phase”, which is the process of filing non-provisional patent applications at the national patent offices and having their patent application examined and granted by each individual country where they wish to seek protection. This is done by filing separate national patent applications in each country before the 30/31 month deadline, and claiming the priority date of the original PCT application and provisional patent applications.

Finally, once the patent is granted, the inventor must pay maintenance fees to keep the patent in force. The term of a patent varies depending on the type of patent and the country, but it is typically 20 years from the date of filing.

Book a Consultation With a Patent Attorney

Free Consultation

Mike Biagio

Mike Biagio has had previous experience in research and development and project engineering before becoming a patent attorney. Mike has been involved in specialist intellectual property law since 2001 in a variety of countries including South Africa, New Zealand and Australia, and has more than 21 years of experience as a patent attorney in obtaining patents and designs around the world for his clients.

Mike has been a lecturer and regular mentor at UNSW, University of Wollongong, and University of Sydney for a number of years, and has advised start-ups at incubators/accelerators on intellectual property and ideation.