A guide to applying for your patent
6
Decision 1: Can I patent my invention?
A patent may be granted for a device or machine, a substance, a process or computer hardware and
software, and even some business methods - in short, almost anything commercially useful.
For a patent to be granted an invention must:
• Be a manner of manufacture. A patent may be granted only for a tangible invention. No matter
how ingenious or unusual they may be, you cannot patent artistic creations, mathematical
models, theories, ideas, schemes or purely mental processes.
• Be new (the legal term is ‘novel’), which means that the invention has not been publicly disclosed in
any form, anywhere in the world, either by yourself or another party. Examples of disclosures that
could show your invention is not new include published patent specifications (both Australian and
foreign), textbooks and technical journals, internet sites, or the sale or use in a public area (including
demonstrations) of a product in Australia.
• Involve an inventive step for a standard patent. The invention must not be an obvious thing to do to
someone with knowledge and experience in the technological field of the invention.
• Involve an innovative step for an innovation patent. There must be a difference between the
invention and what is known about that technology, and this difference must make a substantial
contribution to the working of the invention.
• Be useful. Your invention should do what you say it will do.
• Not have been secretly used by you or with your consent.
Valid patents must also meet other requirements of the Patents Act 1990, in particular:
• A sufficiently clear and complete description. It is extremely important that you put into the
description all the necessary information (including any drawings) about the technical details of
your invention so that others can make or perform your invention once your patent is no longer
in force.
• Claims and the description are for the same invention. The question asked is: are the claims
supported? For example, if your application described a solar cell, claims that make no mention of
light being converted to energy could be said to be not supported by the description because they
might cover other types of energy generators that were not part of the solar cell invention.
• Claims must define only one invention.
Patents or Designs – what’s the difference?
If you want to protect the way your invention works then patenting may be the most appropriate option,
but if the appearance of your product is important and innovative (rather than how it works), then a
registered design may be more appropriate.
For more information on registered designs our website.
A guide to applying for your patent
7
Decision 2: Should I patent my invention?
It’s futile patenting an invention unless you have a plan for commercialisation and can defend it against
infringement. A patent should be considered simply as a ‘barbed wire fence’ around your property. It’s not
bullet proof and requires maintenance, but it does send a strong signal to potential trespassers.
You should strongly consider patenting if:
• the possibility of commercial returns outweighs the time, effort and money required to acquire
and maintain a patent
• the limited monopoly a patent offers would help mitigate the risks of IP theft in the markets you
are interested in
• you have the resources to manage your intellectual property
• a thorough search reveals no other similar technology
• you own the invention and have kept it a secret.
Filing your application via a patent attorney can greatly reduce the risk of serious mistakes and improve
the commercial value of your patent.
There are several reasons why you may not want to file a patent. Being first to market may be worth
more to you than a patent. Lodging a patent tells the whole world what you’re working on. Some
inventors of products with short life-cycles often seek to establish a market leader position before
competitors can react. In these cases a trade mark may be a valuable asset as it protects the name of
the product and the values consumers relate to that name.
For inventions with a limited market value, the cost of getting and maintaining a patent may not be
justified. Your invention may have a limited market or may only be useful in countries where it’s difficult to
secure patent protection.
Even if your invention is patentable, keeping a trade secret via confidentiality agreements can sometimes
be a better strategy. The main benefit of trade secrecy is that it can exist for as long as the information
remains confidential, whereas patents and designs have a limited monopoly term. This type of strategy
is only worthwhile if the product is difficult to reverse engineer (which means that it is difficult to find out
exactly how it is manufactured).
If your invention is new, not publicly disclosed and has commercial potential, then you are ready to
consider what type of patent will suit your needs.