The patent system was historically established to encourage the development of inventions by granting inventors protection against unauthorised copies or use of the invention for a finite period of time. The patent system offers the invention owner (patentee) the right to exclusively exploit a patented invention for a period of up to 20 years. In return, society benefits from free use of the invention thereafter. The system is based on the concept of promoting technological development by rewarding research and development.
The following is a brief overview of some important considerations when developing new inventions, and some of the pitfalls to be avoided.
Can you disclose or use an invention before a patent application has been filed?
In the early stages of research and development, before any patent applications have been filed, it is imperative for the invention to be kept confidential. If the invention is used, demonstrated or discussed publicly, or if information describing the invention is published in a document before a patent application is filed, then the publication or use may jeopardise the validity of any subsequently granted patent. In some countries, including Australia, there is a limited “novelty grace period”, which means that a disclosure by or on behalf of the patent applicant occurring in the 12 month period before a standard patent application is filed is unlikely to invalidate the patent. However, for various reasons which extend beyond the scope of this article, the novelty grace period should be regarded as a last resort, and it is always preferable to file a patent application before making any public disclosure.
In some scenarios, it is not possible to file a patent application before disclosing the invention to a third party. For example, an external designer or engineer may be required to provide design input before the inventive concept can reach functional maturity.
If such a confidential disclosure is necessary, the right to protect the invention with a patent application can be maintained by having anyone who is shown the invention sign a Confidentiality Agreement before any information about the invention is disclosed. However, it should be noted that a Confidentiality Agreement does have several limitations. One such limitation being that the owner of the information does not have any recourse against a third party who receives the information from the initial party to the agreement. Furthermore, a Confidentiality Agreement is usually no longer binding after the owner of the information makes the information public.
In simple terms, it is recommended that a patent application should be filed as soon as practically possible. Any dealings in the invention before filing a patent application should ideally be discussed with a patent attorney to ensure the approach being adopted will not ultimately jeopardise the applicant’s rights.
What type of patent application should I file?
There are several different types of patent application available in Australia. There is a provisional patent application, providing an initial term of 12 months, and two types of complete patents, being an innovation patent having a full term of 8 years and a standard patent having a full term of 20 years.
The best approach for the initial filing depends case by case. However, a provisional patent application is normally the recommended starting point, as this route generally provides the most flexibility long term.
During the term of a provisional patent application, the applicant can commercially disclose, use and sell the invention. In practice, the 12 month provisional patent term provides a means to “test the market” to determine the commercial viability of an invention, and assess whether ongoing patent protection (for example a standard patent application) may be desirable in Australia or overseas.
Australia and the majority of foreign countries are members of the Paris Convention on intellectual property. One important aspect of that Convention is that it provides that an applicant from one contracting state shall be able to use its first patent filing date as the effective filing date in another contracting state, provided that the applicant files a subsequent application within 12 months from the first filing. In simple terms, this means that within 12 months of filing a provisional patent application in Australia, the applicant can optionally choose to file a patent application in another country, and claim the effective filing date of the provisional application. A similar provision applies to standard Australian patent applications filed within 12 months of a provisional patent application.
After filing a provisional patent application, the applicant is able to disclose the invention to other parties without losing their right to patent the invention. Importantly, provisional patent applications are not published, so if the applicant subsequently decides not to pursue patent protection, the information regarding the invention in the provisional patent application never becomes public. For this reason, it may be advisable to only disclose the invention under a confidentiality agreement during the twelve month provisional patent term, if the invention is not yet in the public domain.
It is also advisable, during the 12 month provisional patent term, that the applicant explore the potential commercial markets for the invention so that a calculated commercial decision can be made regarding whether to protect the invention in Australia only or in other countries as well.
During the provisional term, it is common for the invention to change unexpectedly, for example, on account of further research and development and prototyping. If this occurs, it is permissible to file one or more further provisional patent applications. Any subsequently filed applications in Australia or overseas may claim priority to more than one provisional patent application.
What prior art searching options are there?
Before proceeding with the expense of patent protection in multiple countries, it is advisable to obtain an indication of the patentability of the invention. This can be done by way of patent database searching which can be conducted before filing a patent application or alternatively after filing a provisional patent application. Searching aims to locate the closest “prior art” being earlier dated published documents, normally in the form of patent applications.
After filing a provisional patent application, there is an option to request an International-Type Search which is conducted by the Australian Patent Office. This approach can be advantageous over other pre-fling search options. One advantage being that the International-Type Search is conducted to the same standard and using the same databases as the search conducted for an International PCT patent application (discussed below) and gives a strong indication of whether or not a patent is likely to be granted for the invention.
Another advantage of the International-Type Search is that it does not delay the provisional filing, so the applicant can secure the earliest possible provisional filing date.
Regardless of whether the patent applicant ultimately decides to pursue any provisional patent searching, it is recommended that as a minimum they should conduct their own informal searches, to assess what other related inventions may exist in a given field. This kind of searching can be done online through Google and other patent specific databases. Whilst such searching is unlikely to be as thorough as a professional patent search, it nevertheless can be invaluable as a starting point, and can assist in briefing your patent attorney on the state of the prior art. This enables the patent attorney to draft a provisional patent application which is most relevant, and focused on what aspects of the invention are likely to be new and inventive.
What happens after the provisional patent year?
Toward the end of the 12 month provisional patent term, the applicant will need to decide whether ongoing protection is desired, and if so, in what countries applications should be pursued. The choice of countries is case specific and depends on factors such as the likely target market for the product, jurisdictions that key competitors operate in, where the product will be manufactured, and the markets in which the applicant’s business is present. The patent filing strategy is case specific and requires careful consideration.
There are effectively two primary choices at this stage in the patenting process. In particular, the applicant may file:
separate national applications in a select number of jurisdictions; or
an international “PCT” patent application.
National applications are filed at the local patent office of any country where patent protection is sought. In simple terms, such applications are searched and examined by the local patent office and the applicant has the opportunity to address any objections, with the objective of overcoming any objections, and having patents granted.
The PCT (Patent Cooperation Treaty) is an international treaty that enables a patent application to be filed which reserves the applicant the right to file national applications for at least a further 18 months. During that 18 month period, also known as the “international phase”, the application is searched and examined, and there are several opportunities to make changes to the specification to highlight any important differences over any prior art identified in the international search report.
The PCT system provides advantages in so far as the decision concerning which national applications to pursue is delayed by a further 18 months, which provides more time to determine which markets are likely to be important. In addition, the centralised examination process enables the applicant to address any objections or “prior art” centrally, in the international phase, and this can provide cost savings as any national applications which are ultimately filed are less likely to encounter objections by the national patent offices.
Ultimately the best approach will depend on the specifics of a given invention and the applicant’s commercialisation objectives. A patent attorney can provide guidance at each stage in this process and recommendations on how to achieve the commercial objectives in the most cost effective manner.
The patent process is complicated and for those who are new to it, it can be challenging to grasp some of the issues and the ramifications of decisions made throughout the process.
This article is intended to provide an outline of some of the important issues to consider. However, we recommend that inventors should seek customised advice from a patent attorney from the outset.