Provisional Patent Applications
Provisional patent applications are often the first step in the patent process. A provisional patent patent application will lapse 12 months after filing and you must file an associated complete patent application (such as an Australian standard patent application) within 12 months to maintain your patent rights.
A provisional patent application is only ever an “application” and does not itself ever provide any enforceable patent rights. However, it does secure your “priority date” (the date of your invention) on which your complete patent application may be based. This allows you to disclose your invention if you wish once the provisional patent application has been filed.
Because a provisional patent application is the basis for all later associated patent application – it is critical that it is prepared correctly such as including an appropriate level of disclosure, flexible terminology and takes into account international patent law. It is a common misconception that provisional patent applications are a “rough” or “cheap” way to patent rights – this is not the case – a provisional patent specification should be drafted with the same rigor as a standard patent specification.
Standard Patent Applications
Australian standard patents are a form of complete patent that may claim priority from an associated provisional patent application or be filed as a first instance, stand-alone application. As a complete application, the standard patent specification needs to be comprehensive to fully disclose and describe your invention, and once filed – it is generally difficult to add any new information.
To be granted, your standard patent application will need meet the requirements (as outlined below) which generally include novelty, inventive step and sufficiency of disclosure. Once granted, the maximum term of a standard patent is 20 years, provided that the renewals (which are due payable from the 4th year from filing) are paid to keep the patent in-force.
The standard patent process from filing to grant will usually take between 2 to 6 years.
The standard patent process is set out below.
The General Requirements
A standard patent is required to claim an invention that is novel. Novelty is relatively straight forward and requires that your invention, as claimed in the patent, includes at least one new feature or a combination of features which are not shown in the prior art. Such prior art may be a prior patent which was published prior to the filing of your patent applications. However, sometimes the prior art may be a magazine, website or even your own prior publication or use.
A standard patent is also required to claim an invention that exhibits an inventive step. The consideration of inventive step is a little more complex in comparison to novelty – but basically requires your invention, as claimed in the patent, to include a feature or combination of features which are considered to be non-obvious to a person skilled in the relevant field of technology. In assessing inventive step, more than one prior art document may be combined, to assert that an invention lacks an inventive step.
In practice, it is often found that if your invention is novel and includes at least some advantage or function which is different to the prior art then there is a good chance the invention will be considered to exhibit an inventive step. However, if you feel your invention really is more of an incremental improvement then you may wish to consider alternative IP rights such as a registered design.
In addition – the invention as claimed is also required to be fully described and supported by the description. In other words, your patent application will need to clearly and comprehensively describe your invention in a manner which would allow another skilled person to work the invention with only a minimal amount of trial and experimentation. In essence, the law says that you can’t be rewarded with a patent unless you have described the invention in manner which will be later useful to the greater public after your patent has lapsed or expired.
Australian standard patent applications have a general grace period of 12 months for the Applicant’s own disclosure. This means that is you have disclosed your invention prior to filing your standard patent application – you may be able to have this disclosure discounted and therefore maintain novel, which as outlined above is a key requirement to obtaining a patent.