Frequently Asked Questions
Patent Related FAQs
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 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.
Trade Mark Related FAQs
What is a trade mark?
A trade mark is used to distinguish goods or services from those provided by any other person and allows customers to easily identify your goods or services. Trade marks are an effective marketing tool to advertise your product and provide a unique and recognisable identifier in the marketplace.
Trade marks can be formed by using or combining signs such as words, numbers, names, brands, colour, shape, images, smells or sounds. A trade mark is the only way to formally own a unique name or sign that distinguishes your products in the market and upon registration you will receive a formal Certificate of Registration of Trade Mark to prove ownership. This gives you the sole right to use and enjoy the trade mark in the country of registration.
Where do I start if I want to file a trade mark application?
Commonly, the name of a company or product is chosen at the last minute when an accountant asks what you intend to call your company or the name you need for printing packaging or the like. It’s easy to fall into the trap of picking a descriptive name thinking this will tell clients what you do and make you easier to find. The downside to this is that you fall into the bucket with hundreds of other descriptive names chosen by your competitors. This means your name is ultimately not unique but generic and you risk trying to differentiate yourself based on price only.
The starting point to choose a good trade mark, a name that you can actually own, is to choose a name or sign that is not generic or descriptive for your goods or services. Made up words make great trade marks precisely because they do not directly describe the goods and services you sell.
Think about the Telstra™ trade mark. We know they provide telephone services, but we know that because their marketing and branding has embedded that into us. Looking at the name Telstra™ without your existing knowledge does not provide much insight into the services they provide. An international tourist for example who is not aware of the brand is unlikely to know what they do without being told. This may seem counter intuitive, but who do you think will make the more profitable customer? Someone who values your brand as a premium provider and is willing to pay a higher price for a better service long term service or a traveller looking for a budget solution for a one week stay in Australia and will never use your service again.
I know which client I want and the way to build that brand premium is by choosing a good trade mark. To do that don’t pick a name that is descriptive or generic.
If you aren’t sure whether your name is descriptive or generic, speak to us and we can perform registrability search and report to advise you whether the name is likely to be accepted for registration.
My trade mark is distinctive and unique, what is the next step?
If your trade mark is distinctive and unique, the next step is to file a trade mark application. Filing a trade mark application secures the date from which a trade mark is enforceable once registered. Your trade mark attorney will work with you to correctly identify the goods and services that should be included your trade mark application. The trade mark application process takes about 7 months in straightforward cases so it is important to file the application as soon as possible to ensure the earliest possible grant date. Once your trade mark has granted, it can be enforced.
Does my trade mark protect me outside Australia?
Trade mark registrations in Australia only protect you in Australia. If you want protection for your trade mark overseas you will need to file an application in each country of commercial interest. It’s important to have a filing strategy in place for commercial expansion as having someone register your trade mark overseas before you get there can be problematic. Our attorneys can help by preparing a filing strategy to support your international business.
What if I decide not to register my trade mark?
If you choose not to register your trade mark you are leaving your name open to be used by others as you have a very limited ability to stop them. Only registering your trade mark provides proof of ownership and the ability to more easily stop others from using the name.
Why should I use Baxter IP?
Ultimately, only a small number of “do-it-yourself” applications are successful. Most are abandoned due to insufficient knowledge of the application process or requirements. Inexperience in preparing trade mark applications can incur unnecessary time and cost on compliance requirements and professional advice is essential for a positive outcome.
Should someone oppose to your trade mark application, this may be difficult to defend as it can involve complex legal issues and points of law.
Even if the trade mark is successfully registered there may be significant flaws in the application that would prevent you from successfully using the registration to enforce your brand. These often only come to light when you seek professional advice when you wish to take action against an infringer. The following are examples of the types of deficiencies from incorrectly filed applications:
- the scope of registration may be too narrow meaning the registration does not provide adequate protection for your core goods and/or services;
- the scope of registration may be too broad leaving your trade mark open to a non-use removal action or open to be removed as a bad faith application;
- or the goods and/or services chosen may not be correctly identified;
- the incorrect trade mark may have been registered; and
- you may have failed to separately register important components of the trade mark.
Without professional advice from the outset you may find you do not have the appropriate statutory rights required and your ability to enforce your trade mark can be severely limited or non-existent.
Baxter IP has extensive expertise and experience in the area of trade mark law and our trade mark attorneys have successfully registered hundreds of trade marks for our clients. Please contact us for a free and confidential no obligation consultation to discuss your trade mark needs.
What is the process for obtaining a trade mark?
For more information see our trade mark process flowcharts.