Complete Patent Applications
In Australia, a new complete patent application may be filed in the form a standard patent application. It is noted that new innovation patent applications can no longer generally be filed. Innovation patent applications are discussed separately here. The text below relates to standard complete patent appwlications only.
Additionally, when a complete/standard patent application is filed directly overseas, for example filing a standard patent application in the US or China (standard patents in the USA are called “utility patents”), claiming priority from an earlier filed provisional patent application, we generally refer to these applications as convention applications. This is because these applications rely on an international convention to claim the priority date of the provisional patent application.
A standard patent application has a patent term of 20 years. Standard applications are published after 18 months from the earliest priority date. This means all of the information in the patent specification will become public knowledge.
Our comments below are focused on Australian law. However, it is worthwhile to keep in mind that most jurisdictions, such as the US and China, have generally similar requirements.
To achieve a granted or issued standard patent, your patent application will need to be examined by the Patent Office. During examination the Patent Office will conduct a prior art search, which usually includes earlier filed patents, and will make an assessment as to whether your invention is novel and includes an inventive step in view of any identified prior art. The Patent Office will also assess whether your application adequately describes your invention to ensure the patent protection you may obtain is fair given the level of description you have provided. There are also a few more criteria for patentability however we won’t go into it here but are happy to discuss, if you would like to know more.
Novelty & Inventive Step
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.
Inventive step is a little more complex – 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.
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.