Types of patents

• • Typically the first step in any patenting process is to file a provisional patent application.  The filing of the provisional patent draws the proverbial line in the sand which signifies the filing date which will later be used to assess the novelty and inventiveness requirements of the invention.  
  • Once filed the invention disclosed in the provisional application can be disclosed to the public without invalidating the patent.  
  • Provisional applications give you 12 months in which to file a complete application.  This may include filing overseas applications, an International PCT application, a standard Australian application or an Australian innovation patent. 
  • A Provisional Application is an optional step before filing a complete application.

• • A standard complete application can be filed and is required for the grant of a patent in any jurisdiction including Australia.  
  • In most instances the standard application is associated with a provisional patent application provided it is filed within 12 months of the provisional application it will take advantage of the provisional filing date.  Alternatively, the standard application can constitute the first filed application
  • For a standard patent to be granted and the two main requirements for an invention to be patentable are Novelty, and Inventiveness.
    • Novelty is reasonably straight forward and simply requires the invention to be new when compared against prior art that has been used or published before the filing date.  In some countries like Australia provide a “grace period” of 12 months which allow you to obtain valid patent protection even if disclosure has occurred prior to filing.
    • Inventiveness is somewhat more subjective and can be difficult to assess.  Your invention must not be obvious in light of what is previously known to a skilled person in the relevant field of technology.  
  • A standard patent will last for 20 years from the filing date provided annual renewal fees are timely paid.
  • It is important to understand that a patent application does not provide you with legally enforceable rights until the patent has been examined and granted.

• • An innovation patent can only be filed in Australia and associated with a provisional patent application provided it is filed within 12 months of the provisional application it will take advantage of the provisional filing date. 
  • The innovation patent protects those types of invention which are only an incremental change from what is previously known.  For an innovation patent to be granted the two main requirements for an invention to be patentable are Novelty, and an innovated step.
    • Novelty is the same as for a standard patent.
    • An innovated step requires a variation over publicly known products and processes which ‘makes a real or substantial contribution to the working of the invention’.
  • Unlike a standard patent, an innovation patent is not required to undergo a substantive examination before being granted.  The process is relatively quick in comparison with a standard patent. 
  • However, it is important to note that a granted innovation patent is required to be certified by way of examination before an innovation patent can be legally enforced.
  • The innovation patent will last for 8 years from the filing date provided annual renewal fees are timely paid.

One Final Note, a ‘phase out’ of the innovation patent has begun and will expire on 25 August 2021.  The last innovation patents will expire 25 August 2029.

• An International PCT application can also be filed in Australia and provides a first step for having patents granted in a number of different countries to protect your invention in important export markets.
• Patent protection can be pursued in more than 150 countries through a single international patent application.
• The international patent is expensive but provides advantages in deferring the cost of the national phase applications.  This allows more time to explore the potential of the invention.
• The PCT is also an attractive option for licensing of foreign patent rights.  The ability to keep your options open in as many countries as possible allows you to seek licensees which can pay the costs of prosecution in that country.
• The international patent is broken into two distinct phases, an international phase followed by a national phase.

• • International Phase – During the international phase the application undergoes an international search and opinion to provide an indication of patentability.  Further preliminary examination can be requested if required to overcome any issues.
  • National Phase – To obtain patent protection, you must ‘enter the national phase’ within 30 or 31 months from the filing date of the PCT application in each country or region of choice.  
• The international application ceases once national phase has been entered and the patent will proceed in each country of choice.  As each country is a separate jurisdiction the application will proceed as a separate complete patent application in each country and be examined subject to the law of that country or countries.
• If you are thinking about expanding your business overseas, you should consider filing a Patent Cooperation Treaty (PCT) application for your invention.