A patent application once filed, undergoes examination. During examination, an examiner will ensure the invention as defined by the claims set out in the patent application meet all the requirements under the legislation. The examiner may raise objections if the invention does not meet the requirements and the applicant is given an opportunity to amend the claims. If there are no objections raised by the examiner, or the applicant has successfully overcome all the objections, the application is accepted and listed in the Australian Journal of Patents (supplement). Once the application is accepted there is a three-month period in which a third party can oppose grant of the application.
If no opposition is lodged, the patent will be granted after the three-month period upon payment of the required acceptance fees. Should an opposition be lodged, the applicant is notified and a hearing is held before a Delegate to decide the opposition. If the applicant is successful in overcoming the opposition, the patent will be granted. If the opponent is successful, the applicant will be given the opportunity to amend the specification to address any objections raised. If the applicant is not successful in amending the specification to address the objections, a patent will not be granted. The applicant must pay all acceptance fees prior to the patent being granted (extra fees are payable for every claim over 20). The owner of the patent will be issued with a certificate of grant of a Standard Patent.
Renewal fees are payable annually from the 4th anniversary of the filing date of the patent application. A patent will lapse if the annual renewal fees are not paid on time or within six months of due date upon payment of monthly extension fees. The patent owner is responsible for ensuring the timely payment of all renewal fees as well as maintaining the information recorded in the patent register (ownership, address details, licensing arrangements).
The duration of patent protection runs from the filing date and not the date of grant. In Australia, patent protection is for 20 years from the filing date if the annual renewal fees are paid. The exception is pharmaceutical patents where an extension of term can be requested to extend the validity of the patent to up to 25 years.
Once a patent is granted, it is an asset which can be exploited. The owner of the invention has exclusive rights to develop and market the invention including the ability to issue licences. A patent can be a valuable asset and used as collateral to raise further funds. A patent is classified as an intangible property asset. Security rights secured against a patent must be registered in the personal properties securities register.
It is the patentee’s responsibility to enforce the patent. This means that the patentee needs to be proactive in monitoring the market to identify any products that may infringe its patents (and thus affect the potential prices that the patentee can charge). Legal action can be taken to enforce a patent and to prevent other companies/individuals from profiting from the invention.
It is important to note that the grant of a patent is not final and can be contested. A third party can request that a granted patent be re-examined at any time after the grant of a patent. This can be done on a number of grounds, but is usually done where the person lodging the request is disputing the validity of the patent based on the application not meeting the requirements for novelty and/or inventive step.
It is also possible for the Commissioner of Patents to independently decide to re-examine a patent application. This is usually done where:
Unlike established businesses that normally have their IP activities documented in detail by experienced staff, most start-up companies do not have a comprehensive understanding of their IP. This means the traditional questionnaire-centered IP audit approach will not work because the questions may not be interpreted properly, and the answers may not be accurate due to lack of IP experience and valid IP record.
The Australian government has proposed a tax return form that will allow innovators in the medtech and biotech industries to get a tax rebate on revenue from the commercialisation of patented technology.
It’s World IP day! A reminder that a robust IP position can make the world go round. Also a reminder to review your IP position to look at how you can augment or strengthen that position so you can better leverage it.
The Australian government announced the phasing out of the innovation patent. Find out how you can still reap the benefits of the innovation patent.
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