What type of patent application do I need to file?

Dr. Qi Zhang
  • Dr. Qi Zhang - Senior Associate, Patent & Trade Mark Attorney
  • Senior Associate, Patent & Trade Mark Attorney "I love seeing my clients and their businesses grow, because I feel like I grow with them. There’s no better feeling than staying with an inventor from the first discussion of their idea, through successfully protecting their IP rights, to seeing them generate profits from their hard work and creativity.

As a patent attorney regularly advising individual inventors, startups and SMEs on patent strategies, I am often asked a same question by innovators “what type of patent application do I need to file?” Yes, this is a serious question you deserve a clear answer to. If you get it right in the first place, you would see a maximised return from your patent investments.

There are four types of patent applications for the innovators to start the patent journey in Australia:

  1. a provisional patent application,
  2. an innovation patent application,
  3. a standard patent application, and
  4. an international patent application (i.e., PCT application).

Theoretically, you can start with any one of them. However, that doesn’t mean any one of them serves your best interest. I normally apply the following approach to determine the best filing strategy in light of your R&D roadmap and business vision.

If you have just had a proof of concept or a minimum viable product (MVP), and there would be more use cases developed within 12 months, you can start with a provisional patent application (official fee: AU$110). Filing the provisional patent application is able to establish an internationally recognised priority date for the overall concept and provide you with the opportunity to incorporate the new use cases into a complete patent application in Australia (i.e., the innovation patent application, the standard patent application or the PCT application) or a foreign patent application within 12 months although the new use cases might not be able to claim the priority date of the overall concept. The provisional patent application will not be published and only lasts for 12 months.

If your invention has been matured and you are only looking to Australian market for now (say the next 12 months), you can file the innovation patent application (official fee: AU$180) or the standard patent application (official fee: AU$370) as a starting point. The innovation patent is suitable for products or services the life cycle of which is relatively short (for example, 5 to 10 years) because the innovation patent only lasts for 8 years. The innovation patent is granted very quickly (about 3 to 8 weeks) without substantive examination. As a result, you will obtain an official Australian patent instead of a patent application pending. However, if you need to enforce your exclusive rights to the innovation patent (e.g., when a potential infringer is identified in the market), you will have to request examination of the innovation patent and have the innovation patent successfully certified before enforcing the patent rights.

On the other hand, the standard patent is granted subject to substantive examination. Therefore, it might take a few years from filing the standard patent application to having the standard patent granted if not expedited. In spite of this, it could be beneficial to keep the standard patent application pending because the patent specification may be amended to particularly target the infringing products (if not claimed in the originally filed patent specification) that would have emerged during its pendency. As the standard patent lasts for 20 years, it is more suitable for inventions on which the innovators have a long-term strategic vision.

Although the PCT application is more expensive (official fee: AU$4,000 to 5,000) than other types of patent applications, it is a powerful tool to project your business influence in up to 152 jurisdictions if internationalisation is in your blood from the very beginning. However, there has been a misconception that you would have an “international patent” protecting your invention in all the jurisdictions by filing the PCT application. In fact, the PCT application does not provide any enforceable right on a national level, but it gives you 30 or 31 months (“international phase”) to decide on which jurisdictions you want to file national patent applications in. Pitching to potential investors with a positive international examination report is what the fund-seeking innovators need to do during the international phase. The invention is protected only in the jurisdictions where a national patent is subsequently granted by national Examiners.

In summary, it is crucial for the innovators to have a clear idea of your R&D roadmap and business vision before attending the initial meeting with a patent attorney. With the approach set out above, I am confident that you would take a solid first step towards protecting intellectual properties, which paves the way to your business success from day one.