Frequently Asked Questions
What is the difference between patent attorneys and patent lawyers?
In Australia, there is often confusion in delineating whether one should consult a patent lawyer or a patent attorney about a patent matter.
A patent lawyer in NSW is a solicitor specialising in intellectual property rights. Patent lawyers are professionals who has successfully completed either the Board’s examinations (Diploma in Law) or a NSW accredited law degree, as well as completed an accredited program of practical legal training. Patent lawyers typically work with barristers in the litigation of patent rights.
On the other hand, a patent attorney is a professional who has:
- an engineering or science degree;
- completed a group of topics prescribed by the Professional Standards Board relating to intellectual property rights; and
- worked under the supervision of a patent attorney for the prescribed period.
Patent attorneys are often described as part-engineer, part-lawyer, and are typically involved in writing patent applications and in managing patent applications through to patent grant. Patent attorneys can also handle patent oppositions (a tribunal-type process for patent conflicts) before IP Australia.
What is a Patent?
A patent is an exclusive right or monopoly granted by the Commonwealth for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. A patent provides an enforceable legal right to prevent others from exploiting an invention.
What kind of protection does a patent offer?
Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. To stop infringement of a patent, the patent must normally be enforced in a court. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.
What is patentable?
For an invention to be patentable, it must satisfy certain criteria. For example, it must
- be new (novel) when compared with public disclosures anywhere in the world, and
- contain an inventive or innovative step when compared with what is known by a skilled person in the field.
The only present statutory exclusion from patentability in Australia is the patenting of human beings and the biological processes for their generation. Accordingly, a vast range of products and processes can be protected by patents, including pharmaceutical products, new materials, chemical processes and all manner of mechanical, electrical and electronic devices.
What rights does a patent owner have?
A patent owner has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected. The patent owner may give permission, or license, to other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.
Is a confidentiality agreement necessary between a patent attorney and a client?
The Australian Patents Act provides that a communication between a registered patent attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client. That is, registered patent attorneys are under a strict obligation of confidentiality and a strict fiduciary requirement to use your information only to your benefit.
Who is entitled to apply for a patent?
Only the inventor or the person who has acquired the rights to the invention from the inventor can be granted a patent for that invention. If the invention was conceived and developed by the inventor as an employee, the rights to the invention may pass to the employer. If intellectual property is likely to be developed by employees, contractors or consultants in the course of their normal duties, it would be prudent to put a written agreement in place before relevant work is done.
When should I file a patent application?
It is critically important to file a patent application before either publicly disclosing the details of the invention or conducting any commercial activities in respect of the invention. Any such actions will normally invalidate your right to pursue patent protection, although you should immediately consult your patent attorney if such a situation arises.
How long will it take for a patent application to issue as a patent?
A standard patent usually issues within a period of between two (2) to five (5) years from the date of filing of the complete application. However, the period can be shortened considerably if required. An innovation patent typically issues within a period of one (1) to three (3) months. Note, however, that an innovation patent must be certified before legal action can be taken against a potential infringer. Certification requires substantive examination of the innovation patent which may take up to six (6) months. Importantly, if the innovation patent is found to be invalid during examination, it will be removed from the register.
What is a provisional application?
A provisional application is used to establish a priority date for your invention (for the purposes of establishing that your invention is new). A provisional application is only temporary and an Australian or International patent application must be filed within 12 months of lodging the provisional application for your application to retain its priority date.
How long does a patent last?
In general, an Australian standard patent has a maximum term of 20 years, from the date of filing of the complete application, provided that renewal fees are paid. On the other hand, an Australian innovation patent has a maximum term of 8 years from the date of filing of the complete application.
When can I begin selling a product and/or begin seeking interest from others?
If a provisional patent application has been filed for an invention, it is possible to use the term “patent application filed”. Once a complete application has been filed for the same invention, it is possible to use the term “patent pending“. Only when a patent has actually been granted can a product be marked with “Australian Patent Number xxxxxx”. These terms are used to provide notice to third parties that a patent application has been filed in respect of an invention. Use of these symbols where no application has been made is prohibited and subject to fines.
When should patent protection be sought?
It is important to investigate the possibility of patent protection as soon as a new product, composition or process has been created, or when modifications have been made to a product or a process that will provide the manufacturer of that product or the user of that process with a marketing advantage over its competitors.
How can a patent be obtained worldwide?
In general, an application for a patent must be filed, and a patent shall be granted and enforced, in each country in which you seek patent protection for your invention and in accordance with the law of that country. An Australian patent provides protection only within Australia. If you want to apply for a patent in other countries, you generally have two choices:
- file separate patent applications in each country; or
- file a single international application via what is referred to as the Patent Cooperation Treaty (PCT) of which around 140 countries, including Australia, are members.
In a PCT application, a single international patent application has the same effect as national applications filed in the countries of the PCT, and you can then choose to proceed in a selection of the 140 countries at a later date. You will still need to meet the national requirements and pay the costs in each country, but these can be deferred by the PCT procedure by up to 18 months.
What is a grace period?
A grace period allows public disclosure of an invention in circumstances where the inventor has disclosed their invention before applying for a patent— for example, when they have discussed it with a contractor without a confidentiality agreement— without affecting the validity of a subsequent patent application. In Australia, the grace period covers a period of no more than 12 months before the filing date of the complete application. Importantly, however, the lack of a uniform grace period or grace period requirements around the world means that patent applications that rely on grace period will be invalid in some other countries.
What is a patent attorney?
A patent attorney provides representation and advice regarding patenting and related intellectual property matters, such as preparing and filing patent applications for inventions, representation in matters before the Patent Office, patent oppositions and advising in relation to infringement. A patent attorney has a degree or other qualification in a field of patentable technology (traditionally in science or engineering) coupled with further qualifications in the law and practice of intellectual property. Section 200 of the Patents Act 1990 (Cth) provides that a communication between a registered patent attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client.
What is a patent registration?
In a legal sense, there is no such thing as a patent registration. A “patent application” is the first document filed to start the protection process for a new idea. If the patent application passes through examination successfully, then we say that “the patent is granted.” In the United States, the equivalent terminology used is that ‘the patent has issued’. Colloquially, people talk about patent registration because the word registration validly applies to the granting of trade mark applications and registered design applications, but the word should not be used in respect of patents. The phrase “patent registration” does cause confusion because it suggests that applying for a patent is merely a matter of filling in a form. Of course, much more is involved.
What is a trade marks attorney?
A trade marks attorney provides representation and advice regarding trade marks and related intellectual property matters, such as trade mark searching and opinions, preparing and filing trade mark applications, representation in matters before the Trade Marks Office, trade mark oppositions and advising in relation to infringement. Section 229(1) of the Trade Marks Act 1995 (Cth) provides that a communication between a registered trade marks attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client. Both patent and trade marks attorneys can provide representation and advice regarding designs and related intellectual property matters, such as design searching and opinions, preparing and filing design applications, representation in matters before the Designs Office, design oppositions and advising in relation to infringement.
What is the difference between copyright and patents?
Copyright covers all two-dimensional artistic works and some three-dimensional artistic works. However, when three-dimensional artistic works are used commercially (e.g. mass produced), they automatically lose copyright protection. In order to effectively prosecute a party who is using your commercial design, you need a registered design. Neither copyright nor registered designs can be used to protect functional concepts (directly) – this is where patents come in. A patent is a type of intellectual property right that encapsulates an idea in words and stops third parties from copying the idea. Copyright is not normally an effective form of protection for new developments in computer software or website applications – these are best protected by patents. In summary, copyright is used to protect artistic & literary works, registered designs are used to protect the look of designs that are being used commercially and patents protect function concepts or, put simply, the way things work.
What is the process for obtaining a patent?
For more information see our patent process flowcharts.