Filing an Australian patent application

There are two main types of patents available in Australia: these are a provisional patent application and a standard patent application.

Filing a provisional patent application

A provisional patent application is useful for securing a priority date for an invention, however, only a standard patent application can be granted and provide enforceable rights. A provisional patent expires after 12 months and must therefore be followed up by a standard or PCT patent application in order for a patentee to continue along the path toward being granted patent rights.

A provisional patent secures an international filing date so you can then enter into any commercial discussions with the knowledge that your priority date has been secured. You should not, however, disclose any information in your meetings if that information was not also included in the provisional patent. The good news is that you can file multiple provisional patent applications covering updated information and then claim priority from each one so long as you file a standard or PCT patent within 12 months of the earliest priority date, i.e. your first filed provisional patent.

Form of patent applications when filed

Patent applications must include a patent request form that identifies the owners of the patent application along with other details such as the inventors to be named, the title of the invention and any other associated priority documents (such as a provisional application). The other important document that must be filed is a patent specification. The specification is a document that describes the invention in sufficient detail to allow a person skilled in the art to recreate the invention armed only with the document and their own knowledge of the industry. A specification typically includes an abstract, drawings and a detailed description of at least one embodiment or version of the invention.

Filing a standard patent application

A standard patent application must include at least one claim that defines the scope of the monopoly the applicant is seeking. A standard patent application can have as many claims as is necessary although each must include the same inventive concept and additional government grant fees apply for each claim over 20.

The majority of work in preparing a standard patent application for filing goes into preparing the patent specification. It is extremely important for the patent attorney to receive all the information about the invention when preparing the specification as only very limited changes can be made to the specification once it has been filed. No new information can be added to a specification once it is lodged. While minor amendments can be made, these changes can only be made within the scope of the information as filed.

How to work with your patent attorney

The best way to assist your patent attorney in preparing the specification is to fully document your invention along with any sketches or drawings. This can then be sent confidentially to your patent attorney who will review the material and then typically arrange one or more meetings so they can fully understand the invention. This will allow the patent attorney to include all the necessary information in the specification and will assist them in understanding where the crux of the invention is. This will ultimately lead to a better patent specification and ultimately stronger patent rights if your patent is granted.

Important considerations in timing

Depending on the complexity of your invention, it can typically take between 2 and 6 weeks for your attorney to prepare and file a patent application. This time is required due to the complexity of the patent specification and the need to fully describe your invention. Ideally, you should not disclose the invention to any other person or company, even with non-disclosure agreements, prior to securing your filing date as any public disclosure could invalidate your patent (even if you are the one to disclose the information).

Note about innovation patents

There is also a type of patent called an Innovation Patent but it is only available these days as a divisional of a complete (standard, divisional or PCT) patent application filed on or before 25 August 2021. If this may be relevant to you, please contact us and we would be happy to provide a detailed explanation of this right.