Patents | An Overview
Patents are legal rights that a Patent Attorney obtains for inventors or owners of inventions. Patent Attorneys are specialised professionals and are registered with the Professional Standards Board of Australia (www.psb.gov.au) which is established under section 227A of the Patents Act 1990. Patent Attorneys have scientific qualifications as well as some legal training and usually have a technology or industry specialisation. Patent Attorneys are governed by a Code of Conduct which seeks to ensure that the quality of service provided by registered Patent Attorneys is of the highest possible standard.
What is a Patent?
A patent is a legal monopoly granted by the Government to an inventor or to a person entitled to ownership of an invention to exploit the invention in trade and commerce to the exclusion of all others for a fixed term (usually 20 years). The right to exclude others from exploiting an invention can be used by the owner of the invention to generate a higher financial return than might otherwise be available, perhaps by charging a higher premium for the invention, during the term of the patent. The purpose of the patent is to foster and encourage innovation by offering a reward to innovators in return for developing and disclosing their inventions in a published patent specification rather than keeping the invention secret.
A patent specification is a document that sets out the nature of the invention, sets the bounds of the invention that the owner of the invention seeks to protect and details the preferred way of performing the invention so that others can emulate the invention when the term of the patent expires. There are numerous strict legal requirements for a patent specification so it is recommended that an experienced Patent Attorney be enlisted to prepare the document.
What is involved in obtaining a Patent?
After a Patent Attorney has drafted the patent specification, it is then filed with the Patent Office. Typically, most Australian inventors start with an Australian Provisional Patent Application which is filed with the Australian Patent Office which is also known as IP Australia. The Provisional Patent Application filing date is referred to as the ‘priority date’ which becomes the date at which the merit of the invention is assessed later on in the Patent process.
The Provisional Patent Application expires after 12 months so if Patent protection is to be sought then one or more further Patent Applications in Australia or overseas must be filed. After such a further Australian Patent Application, also known as a Complete Patent Application, is filed it is examined by an Examiner with IP Australia for the purposes of assessing the merit of the invention as well as matters of form in relation to the patent specification. If the Patent Application is deficient in any of these areas then the Examiner will object to the Patent Application in an Examination Report.
Once an Examination Report has been issued then a deadline is set in which to overcome the objections raised by the Examiner. If the objections are overcome then the Examiner will accept the Patent Application which, subject to the required Government fees being paid and assuming that no other interested parties object, will proceed to become a granted Patent. After a Patent is granted annual maintenance fees are payable to IP Australia in order to keep the Patent in force until it expires at the end of its 20 year term.
An Australian Patent Attorney can assist you in obtaining a Patent by:
• drafting the patent specification and filing it with the Patent Office;
• monitoring the various deadlines by which action must be taken;
• advising the owner of the invention about any objections raised by the Examiner as well as formulating and submitting an appropriate response to the objections;
• monitoring maintenance fee deadlines; and
• acting as the invention owner’s representative in all matters relating to the Patent.
The services of an experienced Patent Attorney are indispensable if a granted Patent is to be successfully obtained and maintained in Australia or elsewhere in the most secure, efficient and cost effective manner.
How do I get a Patent overseas?
Patents are administered in each country individually so a patent application must be filed in each individual country in which the owner of the invention wishes to obtain patent protection.
If overseas Patent protection is to be sought then before the 12 month expiry deadline of the Australian Provisional Patent Application the most commonly adopted next step is to file what is known as an International Patent Application (also known as a “PCT Application”). This type of Application is administered by the World Intellectual Property Office (WIPO) and arises from the Patent Cooperation Treaty (PCT) of which most countries in the world are signatories. The International Patent Application enables the owner of the invention to defer the decision on which countries to seek patent protection for up to a further 18 or 19 months, depending on the country.
Ultimately, though, a Patent Application must be filed in each country where patent protection is to be sought. These Patent Applications, known as National Phase Patent Applications, are subject to review by the Patent Office of each respective country. Instead of the International Patent Application route, the owner of the invention may omit that step altogether and simply file Patent Applications in their countries of interest before the 12 month expiry deadline of the Australian Provisional Patent Application.
The process of obtaining a granted Patent is similar in most other countries. However, there are slight yet important differences from country to country. Experienced Patent Attorneys are familiar with the requirements in many of the major countries and can take steps early in the patent process to mitigate against or avoid any potentially expensive problems from occurring during the process of obtaining Patents overseas.
What about Innovation Patents?
In Australia there are two types of patents: the first is the Standard Patent which has a term of 20 years and has a higher standard of inventiveness which applies and is typically adopted for higher level or more valuable inventions; and the second is the Innovation Patent which has a lower threshold for inventiveness and a shorter term of 8 years. The Innovation Patent is a very useful form of protection for inventions that perhaps have a lower level of inventiveness or that are likely to have a shorter commercial shelf life. Innovation Patent are popular for protecting business method and software inventions where technological developments can be such that a 20 year term of Patent Protection is far longer than is needed.
Another advantage of the Innovation Patent System is that Examination is not compulsory. This means that an Innovation Patent Application is simply checked for formalities when it is filed with IP Australia and then proceeds to become Granted without the merit of the invention being tested. This unexamined Innovation Patent can remain on the register for up to 8 years and during this period act as a deterrent to competitors from copying the invention. If, however, the Innovation Patent is to be enforced then it must be subjected to Examination, which is requested voluntarily, so that the merit of the invention may be tested. Once Examined the Innovation Patent may then proceed to Certification.
Other countries all have an equivalent to the Australian Standard Patent but only some have a lesser form of patent, generally referred to as utility models, which are similar to the Australian Innovation Patent. There is also the option of protecting innovations by Industrial Design Registration which is reserved for protecting two dimensional and three dimensional designs applied to mass produced articles. Industrial Design Registration protection is available in most countries around the world and is suited to protecting innovations where the appearance of a product can’t be readily altered if it is to be copied.
How do I enforce my Patent if it is infringed?
After a Patent is granted the owner of the invention may enforce the Patent against an infringer. Patent enforcement is generally a civil matter in most jurisdictions which means that legal action must be taken by the owner of the invention or by a party authorised by the owner, such as a licensee. If a negotiated settlement with the infringer cannot be achieved then civil court proceedings may be necessary in order to effectively enforce a Patent.
Remedies for patent infringement can include an injunction whereby an infringer can be legally stopped from continuing their infringing activity. Other remedies can include financial compensation for damages and lost profits, destruction of infringing products and enforceable undertakings from the infringer not to engage in such activities in the future. In some jurisdictions, criminal sanctions are available for the most flagrant of infringing acts.
The vast majority of infringement disputes settle or otherwise never reach the courts. The threat of legal action is often enough to stop or curtail an infringer’s activities. Often the mere existence of a Patent acts as a deterrent to competitors or at the least makes it more difficult to directly compete with a patented product or service.
Patents are regarded as personal property and may be bought and sold (assigned) or certain rights in the patent may be licensed to another under specific terms set out in a legal agreement called a licence agreement. As commercial IP lawyers, Gestalt are able to give specialist advice on licensing as well as prepare and draft licence agreements.
The grant of a patent does not provide its owner with a right to market or use the invention. For example, there may be patents held by other parties that would be infringed by these activities. In addition, a patent owner wishing to exploit a patented invention should also comply with any applicable laws or regulations, for example safely regulations or labelling laws.
A Patent Attorney and a Lawyer may be required to effectively enforce a Patent or to defend an enforcement action.
What about renewals or maintenance fees?
In most countries, Patents must be renewed each year by the payment of maintenance fees to the Patent Office of each country where a Patent has been sought. In some jurisdictions, such as the United States of America, maintenance fees are paid every few years. The failure to pay a maintenance fee by a deadline can result is substantial late fees or even irrevocable lapsing of a Patent.
A Patent Attorney will monitor these deadlines and will provide the owner of a Patent with timely reminders to ensure that these deadlines are not missed. This type of service provides peace of mind and security for Patent owners who can overlook these deadlines when they are concerned with other day to day demands of their businesses.
What kinds of Inventions are Patentable and what are not?
Inventions that are included within the bounds of patentable subject matter include products and processes in most areas of industry, science and engineering such as mechanical devices, machines, materials, electronic devices and other manufactured goods, chemical and pharmaceutical compounds and products and methods for the manufacture of such products.
Human beings, and the biological processes for their generation, are explicitly excluded from patentability by the Australian Patents Act. Examples of excluded inventions as determined by Australian case law include theoretical schemes, plans or arrangements (for example financial schemes), mere working directions and methods and methods of calculation. The discovery of natural phenomenon may not be patentable but an industrial process employing the discovered phenomenon may be patentable. Mathematical formulae, such as an algorithm, are not patentable but a computer program employing an algorithm can be patentable.
Computer programs per se are patentable in some jurisdictions but not in others. Business methods and related software that implements a business method may be patentable in some jurisdictions although the case law at present in jurisdictions such as Australia and the United States have tended to suggest that by and large business methods and related software inventions are not patentable.
Methods of medical treatment, surgical methods and diagnostic methods are patentable in Australia and the United States of America but not in Europe, New Zealand and some other jurisdictions.
Does an Invention have to be New to get a Patent?
To obtain a granted Standard Patent an invention must be novel, which means it is new over what has previously been in the public domain anywhere in the world, and inventive, which means it is not obvious in light of what has previously been in the public domain. To obtain an Innovation Patent an invention must be novel and must involve an innovative step.
To assess the novelty of an invention a comparison is made between the invention claimed in the Patent Application and the “prior art base” (i.e. information in the public domain) as at the ‘priority date’ of the Patent Application. The ‘priority date’ is usually the filing date of the Provisional Patent Application which means that the novelty of the claimed invention is assessed against information in the public domain (e.g. published patent documents, journal articles, trade journals, websites as well as products or processes already in use) before the Provisional Patent Application is filed. An Australian Patent Application that has an earlier ‘priority date’ and a later publication date compared with the ‘priority date’ of the Patent Application being assessed can also be relevant to the novelty of the invention on a ‘whole of contents basis’. A Patent Attorney can advise you about novelty and inventive step as it is applied in Australia and in major countries like the United States of America, Europe, China, Japan etc.
It is important for the owner of an invention to file a Provisional Patent Application before making any non-confidential disclosures of the invention or otherwise taking steps to begin commercialising the invention. Otherwise their own disclosure may be deemed to form part of the prior art base against which their own Patent Application is assessed for novelty and inventive step. There are some ways of overcoming any inadvertent prior disclosures or uses of an invention by exploiting what is known as ‘grace period’ provisions available in some jurisdictions like Australia, the United States of America and Canada. Importantly, a ‘grace period’ is not offered in some major countries like China or in Europe.
In industries where technological development is rapid it can be crucial to file a Provisional Patent Application as early as possible to establish an early ‘priority date’. On the other hand, if an invention is insufficiently developed then it may be too early to file a Provisional Patent Application. A Patent Attorney will help provide guidance to the owner of an invention as to when is the best time to file a Provisional Patent Application.
To assess the inventiveness of an invention a comparison is made between the invention claimed in the Patent Application and the assumed common general knowledge of a ‘person skilled in the art’ (i.e. an imagined “un-inventive” expert in the relevant field of technology) considered separately or together with a single piece of prior art information or a combination of any two or more pieces of prior art information that the ‘person skilled in the art’ be reasonably expected to have combined as at the ‘priority date’ of the Patent Application. The common general knowledge includes the stock of knowledge that an expert in the relevant field would be assumed to have. The one or more pieces of prior art information include any documents or other information in the public domain as at the ‘priority date’ (e.g. published patent documents, journal articles, trade journals, websites as well as products or processes already in use).
For a Standard Australian Patent, where a request for examination was filed before 15 April 2013, the test involves asking whether the invention is obvious from the point of view of a person skilled in the field in Australia provided that any piece of prior art information relied upon would have been ascertained (i.e. likely to have been found), understood and regarded as relevant.
For a Standard Australian Patent, where a request for examination was filed after 15 April 2013, the test involves asking whether the invention is obvious from the point of view of a person skilled in the field anywhere in the world provided that any piece of prior art information relied upon would simply have been regarded as relevant.
The Innovation Patent and the Innovative Step Requirement
To obtain an Innovation Patent an invention must be novel and must involve an innovative step, which is a lower standard than inventive step which applies to a Standard Patent and means that the feature or features that makes the invention novel must make a substantial contribution to the working of the invention but could be obvious. It is this lower inventiveness threshold that makes the Australian Innovation Patent attractive to small and medium enterprises and to large corporate entities alike
When is the Validity of a Patent Including Patentability, Novelty and Inventiveness of an Invention Assessed?
The validity of a Patent can be questioned at any time during its life. However, in practice the first assessment by the owner of the invention in consultation with their Patent Attorney when the merit of filing a Patent Application is first considered. This process may involve simply reviewing the invention and publicly available information known to the owner of the invention or may be supplemented with additional information relevant to the invention obtained through further searching. A Patent Attorney can assist with conducting such further searching, sometimes referred to as Novelty or Prior Art searching, if required by the owner of the invention.
After a Patent Application is filed it is examined by an Examiner in the Patent Office who may do further searching to identify further information relevant to the novelty and inventiveness of the invention and may object that the invention lacks the requisite novelty and/or inventive step. If these objections are overcome by the owner of the invention, with the assistance of their Patent Attorney, then the Examiner may withdraw their objections and accept the Patent Application. After acceptance there is an opportunity for interested third parties to oppose the acceptance of a Patent Application during which new information may be raised and expert evidence submitted regarding the novelty and inventiveness of the invention. However, instances of Patent Applications being opposed are rare and may depend on the importance of the invention to a particular industry.
At any time during the life of a granted Patent an interested third party may seek revocation of the Patent in the Federal Court of Australia or in the competent court of the relevant jurisdiction. Revocation may be sought by a competitor seeking to clear the way for their commercial plans or may be raised as a cross claim in Patent infringement litigation.
Should I Conduct a Novelty or Prior Art Search Before Filing a Patent Application?
A Patent Attorney can conduct prior art or novelty searching based on the subject matter of the invention or using other criteria such as known competitors or inventors active in a particular field of technology. The result of such searches can be used to inform the owner of the invention as to whether the invention might be novel and inventive and, therefore, whether it is worthwhile filing a Patent Application to protect an invention. Specialised databases of patent literature and other literature sources such as journal articles are used by Patent Attorneys to ensure greater accuracy and relevance of any searching to increase the likelihood of finding relevant published material which increases the value of the search.
Another type of search that can be conducted is known as a ‘freedom to operate’ search or ‘FTO’ search which can provide an indication as to whether other parties might have existing patent rights in a particular country that could be infringed should one decide to release a product or service into the market. The ‘novelty’ or ‘prior art’ search is not the same as a ‘freedom to operate’ search, however, the results of the ‘novelty’ or ‘prior art’ search may reveal patents of concerns from an infringement point of view and/or may inform or provide guidance for any subsequent ‘freedom to operate’ searching.
Who is Entitled to Obtain a Patent and Can it be Sold or Licensed?
Patents for inventions are granted to the owner of the invention who may be the inventors themselves or may be another person or legal entity (i.e. a company or trust) to whom the invention has been assigned. Assignment of an invention may be automatic as in the case of an employee who assigns an invention to an employer by way of an IP clause within an employment agreement or where the law of a particular country provides as such. Assignment of an invention from an inventor to another party or entity may be for other valuable consideration. A Patent Application should list both the inventor(s) and the owner(s) or applicant(s) and the party listed as the owner or applicant (sometime known as an assignee) should be able to demonstrate how they are entitled to file the Patent Application as the owner of the invention. A Patent Attorney can assist the owner of an invention to ensure that all required assignment documentation is obtained and lodged where required.
If a Patent Application is wrongfully filed by a party who is not entitled to the invention then the rightful owner can seek to have the Patent Application and/or any granted Patent transferred to them.