Guide to applying
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- Bu səhifədəki naviqasiya:
- Please note: fees may vary depending on how applications are filed .
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- Address for Correspondence
- AusPat
- Infringement
- Prior art
- Provisional Application
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Processing your innovation patent application
After you have filed a complete application for an innovation patent, we will conduct a simple formalities check to make sure that your application is in order. Generally within one month you will receive notification from us formally granting you an innovation patent (provided you have paid the filing fee). Please note that the innovation patent is granted without substantive examination. We have not assessed whether the patent is valid which may make it more difficult to sell or license. If you wish to have a legally enforceable right, you must request examination of your innovation patent. If your innovation patent is infringed, you can take legal action against the infringing party only if your innovation patent is examined and certified.
Examination and certification of innovation patents If you apply for an innovation patent online, you can request examination of your innovation patent application when you apply. If you do not request examination when you apply, you can request it at a later date by completing a separate examination request. You can request an examination online, or you can complete a Request for Examination form. You will also need to pay the required fee. Your competitors can also request examination of your innovation patent. This commonly occurs when they own a patent that might be infringed by your invention. In these instances, the other party pays half of the examination fee, and you pay the other half (if your patent is certified you stand to benefit from this action). If you do not pay the balance, your patent will cease. You will receive one of two possible replies to the request for examination:
• A notice that your patent has been successfully certified, in which case your rights are then legally enforceable. • An adverse report explaining why your innovation patent, in its present form, does not meet the requirements of the Patents Act. Please note that if another party requested examination, they are given a copy of any examination report sent to you (the reports are also publicly available). If you receive an adverse report, the next step depends on the problems identified in that report. Sometimes inventions aren’t properly described, or are indistinguishable from existing technology. Often you can resolve problems by responding with changes to your specification. This procedure of responding to a report and receiving an adverse report may be repeated several times. However, if all problems aren’t resolved in time, your innovation patent will cease. Once certified, your competitors may start opposition proceedings to show that your innovation patent is invalid – see Acceptance, Opposition and Grant. If opposition proceedings are successful, your innovation patent will be revoked.
Processing your standard patent application Requesting examination of standard patent applications
When your application has reached the front of the queue, and if you have not already requested examination, you will receive a letter from us informing you that you have to request examination. You then have up to two months to request examination. If you don’t request examination, your application will lapse. For us to commence examination, you must complete a Request for Examination form, or request examination online, and pay the required fee. Generally the time between when you request examination of your standard patent application and when it is examined is longer than the same time period for an innovation patent. You can request that examination of your complete application for a standard patent happens sooner (known as expediting), but you should be careful about initiating this action.
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Early examination and grant of a patent can have unexpected results. For example, your application may be published too early for you to have time to file a separate application for protection overseas. Remember that, when granted, your patent rights can be retrospectively enforced from the publication date of your complete application, so there is usually no benefit in finalising your patent quickly unless you need to take immediate legal action against an infringer or require a granted patent for licensing or financing negotiations.
Examination of standard patent applications A complete application for a standard patent is assessed against the same substantive requirements of the Patents Act as an innovation patent, except that your invention must involve an inventive step. The test for an inventive step requires a comparison of your invention as defined in the claims with the same information used to determine novelty in relation to innovation patents. In addition, your invention will also be compared against background knowledge in the technical field of your invention which is sourced from common work practices as well as standard texts and handbooks, technical dictionaries and other material widely consulted in the field. The inventive threshold for standard patents is higher than that for innovation patents. In both cases your invention must differ in some way from existing technology. For an innovation patent this difference need only make a substantial contribution to the working of your invention. However for a standard patent, the difference, though contributing to the working, must have resulted from something more than the simple application of published information and/or standard background knowledge. After examination you will be sent either an adverse report or a notice that your standard patent application has been accepted. If an adverse report is sent, you will be given the opportunity to make changes to your specification to try and correct the problems identified. However, if the problems cannot be overcome in time, your complete application will lapse.
Acceptance, opposition and grant We will accept your application when we consider it meets the requirements for a standard patent. Other parties then have three months to start opposition proceedings to show that your standard patent, if granted, would be invalid. Very few accepted standard applications or certified innovation patents are opposed, but if you become involved in an opposition you should seriously consider consulting a patent attorney. After the opposition period, if no opposition is filed and the acceptance fees are paid, your accepted standard application is granted.
Extensions of time You may need to apply for an extension of time to restore a patent or patent application that has lapsed because you unintentionally failed to pay a fee or take some other action in time. For example, perhaps you have lost your priority rights because you did not file a complete application within 12 months of your provisional application. Before being given an extension of time you must explain in a declaration the chain of events that caused the unintentional mistake, and pay any unpaid fees.
What happens after my patent is granted? You need to pay annual maintenance fees if you want to keep your patent in force. We DO NOT send out reminders for maintenance fee payments. It is also your responsibility to take legal action to enforce your rights in Australia. You should seek legal advice if you wish to challenge another person’s patent or if your patent is being infringed upon.
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Be vigilant – check all letters and invoices
Information, including contact details, about patent applications and registrations is available online. Some people may use this information to send letters and invoices to you requesting payment for IP services that you have not requested. They may send you an invoice, or offer to provide a service, such as:
• registering your patent • publishing your patent in an international register • providing you with patent monitoring services. See our website for a current list of companies that send these unofficial invoices and offers, and for examples of the invoices they send. The World Intellectual Property Organization (WIPO) website also contains a warning about these companies. Before paying a fee for any IP-related service, we recommends that you carefully consider what, if any, value the service will provide.
These companies are not associated with us, WIPO or its International Bureau. The services offered by these companies do not provide official trade mark registration or trade mark rights in Australia or overseas.
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Patenting overseas Please read our publication ‘A Guide to applying for your patent overseas’ to learn more about obtaining protection for your patent in other countries.
Costs To view the current patent application fees visit our website or contact us on 1300 651 010.
Please note: fees may vary depending on how applications are filed . A guide to applying for your patent 23
Contact us Our staff will help you and answer your questions, however we cannot assist you on legal matters or provide business advice. You may wish to consult a patent attorney. See our website for information about how to contact an IP professional. We subscribe to the Telephone Interpreter Service. If you need help communicating in English, you can phone the interpreter service on 131 450 for the cost of a local call from anywhere in Australia. All written correspondence regarding trade marks should be directed to:
The Commissioner of Patents IP Australia PO Box 200, Woden ACT 2606 Australia
1300 651 010 (within Australia); +61 2 6283 2999 (International callers only)
www.ipaustralia.gov.au - for comprehensive information relating to intellectual property, to access IP Australia’s eServices, and to download publications and other documents
Communicating electronically with us The date you provide information to us can be critical to the certainty of your IP rights. We haves implemented a set of Electronic Business rules that mean that when you communicate with us electronically (e.g. online), using our preferred method, the date and time of that communication will be Australian Eastern Standard/Daylight Saving Time. Our preferred means of communication is through eServices - you can register and log in on our website. We provide these rules to outline the submission requirements for your IP, including: • identifying the appropriate file formats to submit your service request • providing a list of electronic payment options.
Privacy of personal information
We are committed to handling personal information in accordance with our obligations under the Privacy Act 1988. Our Privacy Policy explains how we handle personal information, and is available on our website.
Customer service charter We are committed to providing our customers with excellent customer service and high quality products and services. Our commitments are outlined in our Customer Service Charter, available on our website. We review our charter regularly and measure our compliance each quarter.
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Glossary of terms
Address for Correspondence
service in Australia
An address in Australia where we can write to you. You should notify IP Australia if this address changes.
An address for legal service, that is, an address in Australia where legal documents may be served. This can be a PO Box in Australia. You should notify us if the address changes. AOJP The Australian Official Journal of Patents. The journal issued by us listing patent applications awaiting approval. Publication in the journal indicates the beginning of the opposition period. AusPat AusPat is our comprehensive online search system for Australian patent data.
Certification of your innovation patent will occur if it is examined and found to meet the requirements of the Patents Act. Once it is certified, you can enforce your innovation patent. eDossier eDossier is a part of AusPat and is an electronic database of documents related to the filing and examination of your patent.
If you miss a deadline during the process of applying for a patent or during examination you can in some circumstances request an extension of time. Please see our website for further information.
The International Bureau of the World Intellectual Property Organization (WIPO).
An innovation patent is granted when it satisfies formality requirements. A standard patent is granted once it means more substantive requirements of the Patents Act. A granted standard patent can be enforced.
Infringement occurs when someone knowingly or unknowingly uses your patent without your permission.
An innovation patent must make an innovative step - the difference between your invention and existing inventions must make a substantial contribution to the working of your invention.
A standard patent must make an inventive step - the difference between your invention and existing inventions must not be obvious to someone working in the same technical field.
Both standard patents and innovation patents require your invention to be novel - that is, your invention is different to existing products in the market.
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PCT Patent Cooperation Treaty. An international agreement used to file an international patent application. In your application, you need to select the countries in which you want a patent granted. Making an application under the PCT is a useful way to apply for your patent in a number of different countries at the same time. Prior art Matter which is in the public domain and is therefore not patentable.
The date established for your invention when you first file a patent application. The priority date is used to determine if your invention is new. If the public knows of your invention before this date, you are not entitled to patent it.
An interim document filed in patent actions. A provisional application establishes a priority date for disclosure of the details of an invention and allows a period of up to 12 months for development and refinement of the invention. A complete application must then be filed, and forms the basis of the grant of a patent. Specification A description of your invention and a claim to the scope of patent protection that you seek. It must describe your invention fully, detail the best way of putting your invention into effect and include at least one claim.
The World Intellectual Property Organization in Geneva, Switzerland. www.ipaustralia.gov.au © Commonwealth of Australia 2014 Document Outline
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