Pathway to grant
- Filing of a standard patent application (if a provisional application has been filed, the standard patent application has to be filed within 12 months).
- Publication of specification in the official journal.
- Examination has to be requested within 5 years of the date of filing or within two months of being directed to do so by the patent office. Objections may be raised during the course of the examination and the applicant has a chance to overcome objections.
- Acceptance and publication of acceptance – if no objections are raised during examination or the applicant has successfully addressed the objections, the patent application is listed as being accepted.
- Opposition period – an opponent can lodge a notice of opposition at any time within 3 months from the publication of acceptance of the patent specification.
- Grant – assuming no opposition or that the applicant has overcome any objections/oppositions, the patent office will issue an electronic certificate of grant of a standard patent.
- Renewal fees have to be paid yearly to maintain the patent.
Grant of an Australian patent
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).
Duration of patent protection
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:
- A third party has filed a notice under s27 of the Patents Act disputing validity of the patent;
- Opposition proceedings have been started and then withdrawn;
- New prior art has come to the attention of the Commissioner.