Patents of Invention
(A) STANDARD PATENTS
(B) INNOVATION PATENTS
(A) STANDARD PATENTS
– Patents Act 1990, as amended, including by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, effective from April 15, 2013, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, effective from February 24, 2019, and the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, effective from August 26, 2021.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since October 10, 1925.
– Convention Establishing the World Intellectual Property Organization (WIPO), since August 10, 1972.
– Strasbourg Agreement Concerning the International Patent Classification, since November 12, 1975.
– Patent Cooperation Treaty (PCT) (Chapters I and II), since March 31, 1980.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since July 7, 1987.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 16, 1995.
– Patent Law Treaty, since March 16, 2009.
Applicant: may be the inventor; a person who would, on grant of a patent, be entitled to have the patent assigned to them; a person deriving title from one of the aforementioned persons; or the legal representative of a deceased applicant, whether Australian citizens or not.
Protection for foreigners and nationals not living in the country: must have an address for service in Australia.
Priorities: partial and multiple priorities may be claimed but where the matter was first disclosed in an application in a Convention country made more than twelve months before the Australian application, Convention priority is not available unless that earlier application lapsed never to be published and was not used to claim priority elsewhere.
Application: comprises patent request and complete or provisional specification.
Convention applications: must include a complete specification, which may include extra subject matter. A certified copy of each basic application, with a sworn translation into English, is only necessary if requested by the Examiner.
Non-Convention applications: may be accompanied in the first instance by a provisional specification (no claims required) or by a complete specification. A complete specification must be filed within twelve months of a provisional; no extension is possible. Two or more provisionals may be cognated by filing a single complete specification within twelve months of filing the first provisional. Two or more complete specifications may be filed in respect of inventions disclosed in a single provisional specification. A complete may be converted into a provisional within twelve months of its filing.
Form: the patent request may be signed by the Australian attorney.
Naming of the inventors: a Notice of Entitlement, which names the inventors and establishes the patentee’s right to the grant of the patent, must be filed when requesting examination as part of examination request form. This form may be signed by the applicant(s) or by a person authorized by the applicant -this may be any person including the Australian attorney. Witnessing or legalization of the declarant’s signature is unnecessary. No other evidence is required.
Notion of the invention: the claims must define a new manner of manufacture, a developing concept which includes articles, apparatus, processes and methods. Novel pharmaceuticals are patentable. Biological processes are patentable.
Exceptions to protection: human beings and the biological processes for their generation, artistic creation, mathematical models and plans, schemes or other purely mental processes are not patentable.
Novelty grace period: public disclosure or use of the invention within twelve months of filing a complete specification by or with the consent of the applicant, or their predecessor will not affect validity.
Plant patents: are available.
Computer software: some forms of software are patentable, otherwise computer code is protected by copyright.
Types of patents: there are two types of grant -a patent and a patent of addition- which is granted on an improvement in, or modification of the main invention for the remaining term of the principal patent.
Priority: in either a patent or a patent of addition, priority can be obtained by a provisional, cognate, Convention (partial and multiple) or divisional type application.
Confirmation patents: cannot be obtained (but see: “modified examination” below).
Secret patents: no provision (but see: “application kept secret” below).
Territory covered: Australia, including Christmas Island, Cocos (Keeling) Islands and Norfolk Island, the Australian continental shelf, the waters above the Australian continental shelf, and the airspace above Australia and the Australian continental shelf.
Filing requirements for an application (to be sent to resident agent):
(a) For filing:
1. A specification in English;
2. Claims in English;
3. Drawings in duplicate on white paper, being hot-pressed or calendered strong paper of good quality.
(b) For the attorney:
– A file copy of the specification and drawings.
(c) National phase under PCT:
To initiate the national phase in Australia, it is necessary to provide the Australian Patent Office with the following:
1. Full name of applicant;
2. A statement confirming the intention that the application proceeds as an application in Australia as a standard patent, patent of addition or a petty patent (innovation patent);
3. An address for service in Australia;
4. The application number, being the WIPO publication number or the PCT application number;
5. The applicant’s signature and date (Australian patent attorneys can sign on behalf of applicant);
6. A fee.
Although there is no specific form, most Australian attorneys have a form that includes the information required by the Patent Office. Once initiated, the national phase PCT application proceeds as if an ordinary application lodged on the date of the international filing under PCT. Time limit for entering national phase: under Chapters I and II: 31 months.
Minimum requirements to obtain a filing date: (1) reference to the PCT application number, preferably WIPO publication number; and (2) if the specification is not in English, a certified translation.
Term for filing missing documents: two months.
Electronic filing: available and preferred, either as B2B or eServices, $100 to $200 reduction in filing fee.
Electronic signatures: are accepted.
Amendment of application: amendments, whether made voluntarily or in response to an Examiner’s objection, must not make the specification claim or disclose that extends beyond that disclosed at the time of filing the complete specification, unless by way of correcting a clerical error or obvious mistake.
Interference: no provision.
Process claims: are patentable if they produce a vendible (of economic significance) product (something in which the promise of the invention may be observed); apparatus, process and product may be claimed in a single application.
Examination: for standard patent applications by request which may be made at any time, but application will lapse if examination is not requested within five years of filing the complete specification (or of the international application under PCT) or within two months of a direction by the Commissioner to do so. Persons interested may request the Commissioner to direct examination. There is no additional fee if examination is requested before a Commissioner’s direction issues.
Search results: results of any searches conducted by a Patent Office in any corresponding overseas applications (Disclosure of Search Results) are not required.
A modified examination is no longer available, but accelerated examination may be requested under the Global Patent Prosecution Highway where the Australian claims correspond to one or more allowable claims in a case which is associated with an overseas application, which has been examined by the Austrian, Canadian, Danish, Estonian, Finnish, German, Hungarian, Icelandic, Israeli, Japanese, Korean, Norwegian, Portuguese, Russian, Singaporean, Spanish, Swedish, United Kingdom or United States Patent Offices.
Extent of examination (regular): an international novelty search of patent and application records is made in order to determine whether the invention is novel and involves an inventive step. Claims of earlier priority dates are considered whether published before or not. The Examiner also considers whether the specification discloses a specific, substantial and credible use for the invention, whether it discloses the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, and whether the claims are fully supported by the description, define a manner of manufacture, and relate to a common novel concept.
Division: a voluntary divisional application may be filed for matter disclosed in the original. The parent must not have lapsed, been refused or withdrawn before the divisional is filed. It must be lodged within three months of advertisement of acceptance of the patent.
Conversion: may be converted to an innovation patent application at any time before acceptance.
Acceptance of application: the application (for a standard patent) must be accepted within twelve months of the Examiner’s first report. Response fees must be paid for responses lodged after twelve months from the date of the Examiner’s first report.
Publication: specifications in relation to an application for a standard patent become open-to-public inspection (OPI) electronically, eighteen months after the earliest priority date of the claim or claims of the complete specification. The applicant can request early OPI at any time after filing of the complete application. In an infringement action damages are not available over the period before OPI.
Opposition: to a standard patent application before the Patent Office may be filed within three months of advertisement of acceptance.
Delivery of document: a patent is deemed to be granted on sealing of the application by the Patent Office. Unless opposition has been filed, sealing must take place within six months of the advertisement of acceptance.
Beginning of protection: date of filing the complete specification (or the international application under PCT). Litigation regarding infringement cannot commence until sealing of the patent, however damages may be awarded retrospectively to the date on which the complete specification became open-to-public inspection.
Duration: for a standard patent, twenty years from the date of the patent: date of filing the complete specification (or the international application under PCT).
Extension: extensions up to five years beyond the normal twenty years are available for pharmaceutical patents where regulatory approval delays have been encountered.
Annuities: continuation fees are payable annually before the anniversary of the complete application date, commencing with the fourth anniversary. On the granting of the patent renewal fees are payable annually. The annuities may not be paid more than one year in advance and the time for payment may be extended by not more than six months on payment of a fine calculated on a monthly basis; continuation fees are payable on applications for a patent of addition but renewal fees are not payable on the grant of a patent of addition.
Working: not compulsory, however, lack of working during a period of three years may lead to the grant of a compulsory license.
Marking of patented articles: marking is not compulsory but is desirable to counter a plea of “innocent” infringement.
Amendment of patents: amendments are allowable so long as they do not insert matter that extends beyond what was disclosed at the time of filing the complete specification -these restrictions do not apply in the case of a clerical error or obvious mistake.
Reexamination: may occur at the instigation of the patentee, the Commissioner or any other person except when legal proceedings in which the patent’s validity is disputed are pending. Only documentary disclosures are considered during reexamination.
Assignment – license: assignments and licenses may be entered into at any time and must be registered with the Patent Office.
Compulsory licenses: an interested party may apply to a court and obtain a compulsory license, if three years after the grant of a patent, the reasonable requirements of the public in respect of the invention have not been met. The patent may be revoked if two years after the grant of the first compulsory license the reasonable requirements of the public are still not met. The Federal Court may grant a compulsory license if the patentee has contravened one of the restrictive trade practices provisions of the Trade Practices Act.
Restoration of ceased patents: if a patent ceases unintentionally and there is no undue delay in making application, the patent may be restored.
Infringement: a patentee or exclusive licensee may bring an action for infringement before the Supreme Court of a State or the Federal Court. There is an exemption from infringement for activities undertaken for the purpose of obtaining information required for regulatory approval or for research activities where the dominant purpose is to gain new knowledge, test a supposition of improve upon or modify the invention.
Penalties: an injunction and either damages or an account of profits, in the case of innocent infringement damages, or an account of profits may not be awarded. Exemplary damages may be awarded in certain circumstances. Unjustified threats of legal proceedings are actionable and damages may be awarded.
Revocation: a petition for revocation may be made to a State Supreme Court or the Federal Court at any time during the term of the patent. The grounds for revocation include lack of invention, lack of novelty, inutility, lack of inventive step, insufficiency, prior secret use and obtaining.
(B) INNOVATION PATENTS
– Patents Act 1990, as amended, including by the Patents Amendment (Innovation Patents) Act 2000, effective from May 24, 2001, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, effective from April 15, 2013, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, effective from February 24, 2019, and the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, effective from August 26, 2021.
Note: the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, has amended the Patents Act 1990 to phase out the innovation patent. From August 26, 2021, an application for an innovation patent can no longer be filed in Australia.
Membership in International Conventions
– As for “Standard Patents“.
Filing application: as for a “standard patent” except that an innovation patent specification includes no more than five claims, all of which may be independent claims.
Novelty: as for “standard patent“.
Innovative step: a lower standard than that needed for a standard patent, the invention must involve an innovative step i.e. one that makes a substantial contribution to the working of the invention.
Not patentable: plants and animals, including human beings, and biological processes for their generation are not patentable.
Amendment of application: as for “standard patent“.
Process claims: as for “standard patent“, a process may be claimed provided it results in a vendible product.
Examination: once an innovation patent application is lodged, the application is initially checked only for formalities. If satisfied that it passes the formalities check, the Commissioner must accept the application and grant the innovation patent.
Substantive examination: occurs only after grant, if the Commissioner decides to do so or if the patentee or any other person asks the Commissioner to do so.
Extent of examination: the Examiner considers whether the specification fully describes the invention, gives a method of performance and whether the claim is clear, fairly based on the matter described and defines a manner of manufacture. The patent is also examined for novelty and innovative step.
Search results: not required.
Division: a voluntary divisional application for a standard or innovation patent may be lodged at any time before the grant of the parent patent.
Conversion: may be converted to a standard patent application at any time before grant.
Publication: first occurs on grant of the innovation patent.
Opposition: pre-grant opposition is not possible. Anyone may oppose at any time after grant and certification.
Granting and Certification
Duration: the innovation patent is granted for eight years from the filing date of the complete specification.
Certification: occurs only after substantive examination. The patentee is not allowed to exert any rights unless the patent has been examined and certified.
Annuities: due at the second and subsequent anniversaries.
Modification of Protection after Granting
Opposition: may be lodged at any time after the patent has been certified.
Reexamination: as for “standard patent“.
Assignment: as for “standard patent“.
Compulsory licenses: as for “standard patent“.
Restoration: not available.
Infringement – penalties – revocation: as for “standard patent“.