Patents 101

Our patent attorneys generally have industry or post doctoral experience in their respective fields of expertise and an interest in continuing education in these fields, which means that they are well placed to understand innovative technical concepts and to translate them into patent specifications in a timely and cost effective manner.

What is a patent?

A patent is a monopoly granted by the government of a country to the owner of an invention for a limited term, usually 20 years. It is granted in exchange for public disclosure of the invention. The rationale behind the patents system is that the scientific and general community will benefit if inventions are put into the public domain, rather than being kept secret. An invention is publicly disclosed in a document called a patent specification. A patent specification must describe the invention in sufficient detail to enable a person skilled in the field to perform the invention without an undue amount of experimentation.

How does the patents system work?

Briefly, in Australia the system to grant patents is run by the Patent Office in Canberra which calls itself ‘IP Australia’. An application for a patent is made to the Patent Office, which has a body of patent examiners who examine patent applications and decide, based on preset criteria, whether or not a patent should be granted. FPA Patent Attorneys can act on your behalf before the Patent Office to write and lodge the application and to argue with the patent examiner to obtain your patent.

Once a patent is granted, the patent owner has the power to sue those who infringe the patent in a court of law to stop the infringement and receive monetary compensation. Therefore the threat of a court action is often enough to deter competitors from copying the invention. Herbert Smith Freehills litigation lawyers are able to run patent litigation, should the need arise.

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. Herbert Smith Freehills commercial IP lawyers 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.

Foreign countries have similar patent systems. Usually, Australian applicants first make an application in Australia, and by virtue of an international convention (Paris Convention), foreign applications can be deferred for up to 12 months, whilst still retaining the priority of the first application filed in Australia. Another international convention (PCT), allows the filing of an international application to reserve patent rights in over 100 countries for a limited period. FPA Patent Attorneys can provide strategic advice about securing protection in foreign countries. 

Are there different types of patents?

In Australia, there are two different types of patents, namely standard patents and innovation patents. A standard patent is intended to cover inventions whereas an innovation patent is intended to cover innovations or ‘second tier inventions’ which are not considered to possess full inventive merit but still make a substantial contribution over what is currently known or used. Because inventions covered by standard patents have a greater degree of inventiveness than innovations covered by innovations patents, standard patents are awarded a longer term than innovation patents. Applications for each type of protection involve different procedures as discussed below.

Most other countries also have a standard patent system. Only selected countries have a system to protect second tier inventions. Generally, in other countries these forms of second tier protection are called utility models.

Separate to the patent system is the system for registration of designs to protect the appearance of a product. An invention for a product may also have protectable design aspects and registered design protection can be obtained concurrently with patent protection. Registered designs will not be covered in this booklet. For further information, please ask for our guide: Registered Designs in Australia.

How long does a patent last?

The monopoly term of a patent is intended to give its owner the ability to at least recoup the cost of the research and development that has gone into the invention. In Australia (and most other countries) standard patents have a maximum term of 20 years, provided periodic fees are paid to the Patent Office. In Australia and some other countries, patents for pharmaceutical substances can obtain an extension to account for the delays in obtaining regulatory approval. Innovation patents have a maximum term of eight years.

At FPA Patent Attorneys, we run a reminder system to advise you about payment of renewal fees throughout the term of your patent.

Once a patent expires, anyone is free to use the invention covered by that patent. However, where there is a commercial product embodying that invention, the expiry of the patent does not necessarily mean that someone else can freely copy that commercial product. The commercial product may embody other inventions covered by other patents.

FPA Patent Attorneys can conduct ‘free to market’ searches and advise in relation to patent infringement.

What type of things can I patent?

Patents are granted for inventions in many fields of scientific and engineering endeavour for both products (for example machines, pharmaceuticals) and processes (for example, methods of manufacture, methods of pest control). Generally, patents are granted for those inventions which relate to the useful arts as distinct from the fine arts. Mere mental processes or discoveries are not patentable. To be patentable, the mental process or discovery must be embodied in a product or process which relates to the useful arts. For example, the discovery of a chemical phenomenon may not be patentable whereas a chemical process embodying the phenomenon is more likely to be patentable. A mathematical algorithm is not patentable in itself.

On the other hand, a computer program employing an algorithm, for example, for air traffic control, would be patentable in Australia. Computer programs are patentable in some countries but not in others. Likewise, business systems and software implementing specific business processes lie on the edge of being patentable and are patentable in some countries but not in others. Australian patents law also expressly excludes human beings and processes for generating human beings from being patented. In each case, FPA Patent Attorneys can provide specific advice as to whether an invention is patentable and can highlight any potential difficulties in foreign countries.

Do I need a new idea to get a patent?

Yes. Generally, to obtain a valid patent, an invention must meet two criteria. Firstly, the invention must be novel (new) and secondly, the invention must possess an inventive step in the case of a standard patent, or an innovative step in the case of an innovation patent. The filing date of the earliest application for a patent is called the ‘priority date’. Novelty, inventive step and innovative step are judged in the light of things that were known or used before this priority date. Therefore, obtaining the earliest possible priority date for an invention, by filing an application at the earliest opportunity can be of paramount importance.

In Australia, to be novel, the invention must not have been published in a document or sold or publicly used anywhere in the world, before the priority date. Also relevant for determining novelty is any Australian patent application that was not published until after the priority date of the patent being assessed, but which claims an earlier priority date of its own. Other countries judge novelty against similar criteria. This relevant material is called ‘prior art’.

There are some exceptions to the novelty rules. In Australia, there is a 12 month grace period which enables a valid application to be filed up to 12 months after the first authorised public disclosure of the invention. We recommend against relying on the grace period for two reasons. Firstly, another person could see your invention and file an application before you. While that person may have obtained their idea from you thus making their application invalid, this could be difficult to prove. Secondly, grace periods are not available in most other countries so your disclosure of the invention in Australia could invalidate your rights in other major countries including Europe, Japan and China to name a few.

There are a number of other limited exceptions to the novelty rules including unauthorised publications by others, presentations to learned societies, certain recognised exhibitions, and reasonable trials necessary to be performed in public. It may be necessary to file an application within a certain time limit of the disclosure.

What is an inventive step?

Patentable inventions must also possess an inventive step. For a standard patent, where a request for examination was filed before  15 April 2013, the test is as follows:

  • whether the invention is obvious from the point of view of a person skilled in the field in Australia
  • that person is equipped with the common general knowledge of a skilled person in the field, and
  • that skilled person may consider a disclosure which was material under the novelty rules above, provided that disclosure would have been found by him, understood and regarded as relevant.

For a standard patent where a request for examination was filed on or after 15 April 2013, the test is as follows:

  • whether the invention is obvious from the point of view of a person skilled in the field
  • that person is equipped with the common general knowledge of a skilled person in the field, and
  • that skilled person may consider a disclosure which was material under the novelty rules above, provided that disclosure would have been regarded as relevant.

Combinations of prior art documents, for example two prior patent specifications, are only permissible if the skilled person could reasonably be expected to make the combination.

What is an innovative step?

For a valid innovation patent, the innovation must possess an ‘innovative step’. That is, the innovation must differ from the prior art in ways that make a substantial contribution to the working of the invention.

The test has two aspects, one being the information to which the innovation is compared and the second being the degree of difference over that information. On the one hand, the test is thought to set a lower level of inventive merit to obtain a valid innovation patent compared to that required to obtain a valid standard patent. On the other hand, the test gives consideration to a wider pool of prior art than for the inventive step test set out above. This makes innovation patents easier to obtain on the one hand and more difficult to obtain on the other so specific advice should always be obtained before a decision is made to proceed with one type of patent over the other.

How and when are these patentability criteria assessed?

The criteria of patentable subject matter, novelty and inventive step which are set out above may be assessed at various times throughout the life of a patent application or patent. Firstly, we can provide preliminary advice as to whether an invention satisfies these criteria before filing a patent application. Such an assessment may be based on information at hand which may include prior art obtained through optional prior art searches as discussed below.

Secondly, during examination of a patent application, the examiner may do his own search to find relevant prior art and raise objections based on that prior art. If the objections are overcome, the examiner may accept the application (acceptance) and allow the application to be granted. For most patents, that is usually the end of the assessment. However, the mere fact of the Patent Office granting the patent does not mean that the patent is actually valid. For example, there may be further relevant prior art that the examiner is not aware of. Other parties may attack the validity of the patent as discussed below.

After acceptance, another person may object to the granting of the patent in a process called opposition (see ‘What happens if the application is opposed?’), which occurs on only a small percentage of applications. During opposition, further prior art may come to light or the opponent may lodge evidence from persons skilled in the field. This material would probably not have been available to the patent examiner. The Patent Office can revoke a patent following opposition if the patentability criteria are not met.

A person may also seek revocation of a patent in a court. This may occur in response to a patent infringement action from the patent owner. The courts have the final say in opposition and revocation proceedings as to whether the patentability criteria are met and thus whether or not the patent is valid.

How and when is a prior art (novelty) search done?

A search of patent documents and technical literature is desirable to assess novelty and inventive step.

Searching is not an exact science because a consideration of all documents published everywhere in the world before the date of a patent application is physically impossible. FPA Patent Attorneys have access to international databases that contain abstracts of prior art documents. These databases are searchable by key words and by using an established technology classification system. A basic search using these databases can provide a good guide to patentability. However, no search, no matter how wide, can be considered definitive.

A search may be performed before the first application for protection is filed, or, depending on the state of knowledge of the inventor in the relevant area of technology, it can be deferred until later in the process. At the very least, it is recommended that a search be conducted before a decision is made to proceed with the high cost step of foreign patent protection. If a search reveals that an invention lacks novelty then the high cost of foreign patent applications will be saved.

Unless instructed to do so, we do not routinely perform prior art searches before filing a patent application.

A prior art search may also reveal patents which should be assessed to check for infringement. However, for a more comprehensive check of potential infringements, a ‘free to market’ search is recommended.

For further information about searches, please ask for our supplement Guide to patent and design costs.

Who can obtain a patent?

A patent may be granted to the inventor of an invention. However, if the invention is made in the normal course of employment with a company then the company may own the invention and therefore be entitled to the patent. In that case, the application is usually filed in the company name. In other cases, the inventor may assign the rights to another person, making that person entitled to the patent. Where the inventor is deceased then their legal representative may be entitled to the patent.

A person who wrongfully obtains an invention from the inventor is not entitled to the patent. The rightful owner can contest the grant of the patent at the patent office in an opposition or in court and if successful, have the patent awarded to them.