OBTAINING A PATENT IN AUSTRALIA - Spruson
PATENTS INFORMATION KITOBTAININGA PATENT INAUSTRALIAA patent is the statutory rightto the exclusive use of aninvention. Thus, the ownerhas the right to prevent othersfrom making, selling, usingor importing the patentedinvention for as long as thepatent remains in force.Patents can be obtained in respect ofproducts and processes that are new anduseful. In general, in order to be patentable,the invention should be of an industrial,commercial or trading character, as opposedto a purely artistic or intellectual exercise.The invention must be new and involvesome ingenuity or exercise of inventive skill,but it is not necessary that the inventionbe complex or a major breakthrough.Even simple or small improvements can bepatented, provided that such improvementsresult in significant advantages.Whilst in general it is necessary for aninvention to be new at the time of the firstfiling, Australia provides a grace period oftwelve months from a disclosure by theapplicant within which to file a completepatent application. However, where reliance ismade on the grace period, the rights grantedupon issue of a patent may be limited.Any public disclosure or commercial useof a patented invention after the prioritydate will not prejudice the validity ofthat patent. Therefore, once a patentapplication has been filed, the inventionas described in the specification (filed withthe application) may be advertised, sold orotherwise disclosed to the public withoutprejudice to the validity of the patent toissue on that application.A patent application may be either a“provisional” application or a “complete”application.Provisional patent applicationsA provisional application is useful if theinvention is in its infancy and changesand modifications are envisaged in the 12month period following the filing of theprovisional application. Filing a provisionalapplication with the Australian PatentOffice establishes a “priority date” for theFurthermore, a disclosure in the graceinvention as described in the provisionalperiod, before the filing of an application,specification. If the applicant wishes tomay invalidate overseas applications in theobtain a patent, the applicant must file amajority of countries which do not have ancomplete application within 12 months ofequivalent grace period.filing the provisional application. Filing theprovisional application effectively gives theFiling a patent applicationapplicant a 12 month window in whichin Australiato proceed with patenting and enablesWhen applying for a patent in Australia, itdevelopment of a market-ready prototype.is necessary to submit a description of theHowever, if no further development of theinvention (called the “specification”) to theinvention is envisaged, or if the applicantPatent Office to obtain a priority date. Thewishes to obtain a patent as soon asinvention should be described in sufficientpossible, it may be more appropriate todetail in the specification to enable “afile a complete application in the firstperson skilled in the art” to put the invention instance.into effect, without the need to exercisefurther inventive skill or ingenuity.www.spruson.com1
PATENTS INFORMATION KITUSUALPATENTINGPROCEDUREor within two months of a direction fromthe Patent Office to do so, whichever is theearlier, otherwise the application will lapse.During examination, the Patent Examiner willexamine the application for compliance withthe Patents Act and Regulations (includingconducting novelty searches (at additionalcost) if no earlier search report is available).If objections are raised by the Examiner, theapplicant is allowed a period of 12 monthsto overcome all objections raised and placethe application in a condition for acceptance.If and when the application is acceptedby the Patent Office, the acceptance isadvertised in the Official Journal of Patents.Meet withPatentAttorneyUndertakeSearchFile ProvisionalApplication12 Complete patent applicationsThe complete application may be for astandard patent or an innovation patent.Standard patent applicationsThe term of a standard patent is 20 years,commencing on the date of filing of thecomplete application.After the application is filed, it must beexamined by a Patent Examiner before itcan be accepted for grant. Examinationmust be requested (i.e. it does not occurautomatically) and an examination fee mustbe paid (it may also be necessary to pay anadditional search fee if no earlier reliablesearch report for the same invention isavailable). Usually, a “reliable” search reportwill be a report issued by any one of a list ofrecognised Patent Offices around the world.Examination must be requested within fiveyears of the filing of the complete application,www.spruson.comAny person may oppose the grant of apatent on an application by filing a Noticeof Opposition within three months ofthe advertisement of acceptance. If anopposition is filed, both the applicant andthe opponent are given an opportunityto lodge evidence, and the matter is thenheard by a Delegate of the Commissionerof Patents. The majority of patentapplications proceed to grant unopposed.If there is no opposition, or if theopposition is unsuccessful, a patent will begranted on the application upon paymentof an acceptance fee.To maintain the patent or patentapplication in force, it is necessary topay annual fees. These fees are called“continuation fees” during the applicationphase, and “renewal fees” after thepatent has been granted. No continuationfees are payable for the first four yearsafter the filing of the complete application.You are not entitled to represent thatan invention is patented until the patenthas been granted. Once the patent hasbeen granted, you are entitled to markthe product with the word “patented”.While the patent application is pendinghowever, you may use the notation “patentpending” or “patent applied for” or “patentapplication no. .”.2
PATENTS INFORMATION KIT AUSTRALIANSTANDARDPATENTAPPLICATIONFile StandardPatentApplicationPreliminarySearch andOpinion?Publication ofAppliationDirection toRequestExaminationAppealto Court ApplicationRejectedRequestExamination Examination?ObjectionsReportIssuesResponse Filed No objections Appealto Court PatentRefused ApplicationAcceptedOpposition Successful Opposition byThird Parties?Grant OppositionDismissed AnnualRenewalExpirywww.spruson.comCommencing 4 years from filing20 years from filing3
PATENTS INFORMATION KITAUSTRALIANINNOVATIONPATENTAPPLICATION File InnovationPatentApplication0-3 months GrantAppealto CourtTo enforce RequestExaminationPatentRevokedInnovation patent applicationsIf a complete application for an innovationpatent is filed, the application willimmediately undergo a formalities checkand a patent will be granted if all formalmatters are in order. No examination of thesubject matter, other than to ensure that itis not excluded subject matter, is made.The patent will be granted for a term ofeight years, subject to annual renewalfees being paid, but the patent cannot beenforced until the patent is examined andcertified by the Patent Office. Examinationmay be requested by the patentee, by athird-party or upon the direction of theCommissioner. A third-party can oppose thecertification after grant by the Patent Office.Innovation patents are suitable forprotecting lower level inventions, whichcannot be protected by standard patents. ObjectionsExaminationReportIssues?No objections Appealto CourtResponse FiledCertification ?Opposition byThird PartiesOppositionSuccessful PatentRevoked Opposition Dismissed AnnualRenewalExpirywww.spruson.comCommencing 2 years from filing8 years from filing4
PATENTS INFORMATION KITSEARCHESOVERSEASPATENTAPPLICATIONSPatentability searches of worldwide(patent) literature should be carriedout prior to taking steps to patent aninvention. Also, freedom to operatesearches should be carried out prior tocommercially using an invention as it ispossible that use of the invention mayinfringe earlier intellectual propertyrights granted to a third party. In thisway it will be possible to identify anypotential obstacle to use and patentingof the invention.Searching is a specialist task and it isrecommended that searches be carriedout by a Patent Attorney.Patents are granted by the Patent Offices of individual countries. In order to obtainpatent protection in overseas countries, it is necessary to obtain a patent in eachcountry in which patent protection is required. The Patent Office is normally anauthority of the government of a country and since there is no world government,it follows that that there is no “world patent”.Patent applications under theParis ConventionThe usual method of obtaining patentsin overseas countries is to lodge aseparate patent application in eachcountry of interest. However, once thefirst patent application has been filed ina country which is a member of the ParisConvention (e.g. Australia), the filingof corresponding applications in otherconvention countries can be deferred byup to twelve months from the first filingwithout loss of priority. Most countriesare party to the Paris Convention.The cost of filing overseas patentapplications varies from country to country,and costs in non-English speaking countriesare usually greater due to the need totranslate the patent specification andassociated correspondence. Note thatcosts will also be incurred after filing theapplication due to the need to process theapplication through to the grant of a patent.Patent Co-operationTreaty applicationsMany countries of the world are also partyto the Patent Co-operation Treaty (“PCT”).Under the provisions of the PCT, a singlewww.spruson.comInternational (PCT) patent application canbe filed with the International Bureau. Thedeadline for filing individual applications inthose countries can then be deferred to 30or 31 months (depending on the country)from the priority date of the application.During the PCT phase, an internationalnovelty search is conducted and theapplicant is provided with the results ofthat search. The applicant will thereforehave the benefit of the search resultsbefore having to decide whether or notto proceed in any or all of the countriescovered by the PCT application.It should be noted that the PCTapplication does not take the place ofindividual “national” applications in eachcountry, but defers the national processingof the patent application in each country.The costs for a PCT application areadditional to the costs of the nationalprocessing of the patent application ineach selected country.The PCT application option allows apatent application to be filed initiallyin one language (no need for overseastranslations), at one Patent Office (no needto file at several overseas countries) andwith one set of fees. The internationalpatent search provides an indication of5
PATENTS INFORMATION KITOVERSEASPATENTthe novelty or otherwise of the invention,and therefore the possibility of obtainingstrong patents. The PCT application canbe amended, if required, to distinguish theinvention from any document located inthe international search which can minimisefuture processing costs.European patent applicationsMost European countries are party to theEuropean Patent Convention (“EPC”),which allows a single “European”patent application to be filed with theEuropean Patent Office. The Europeanpatent application will be examined bythe European Patent Office and if theapplication is in a condition for acceptance,a European patent will be granted. In orderto obtain patent protection in any of thecountries designated in the European patentapplication, the European patent mustthen be validated in the selected countries,and a translation of the European patentspecification into the national languageof each selected individual country maybe required. Renewal fees are likely to bepayable in those countries in which thepatent is validated. If patent protectionis required in more than three Europeancountries, it is usually cost effective to file aEuropean patent application.www.spruson.comList of countries party to thePatent Co-operation Treaty:Albania, Algeria, Angola, Antigua and Barbuda,Armenia, Australia, Austria, Azerbaijan, Bahrain,Barbados, Belarus, Belgium, Belize, Benin, Bosnia andHerzegovina, Botswana, Brazil, Brunei Darussalam,Bulgaria, Burkina Faso, Cambodia, Cameroon,Canada, Central African Republic, Chad, Chile,China, Colombia, Comoros, Congo, Costa Rica, Côted’Ivoire, Croatia, Cuba, Cyprus, Czech Republic,Democratic People’s Republic of Korea, Denmark,Djibouti, Dominica, Dominican Republic, Ecuador,Egypt, El Salvador, Equatorial Guinea, Estonia, Finland,France, Gabon, Gambia, Georgia, Germany, Ghana,Greece, Grenada, Guatemala, Guinea, Guinea-Bissau,Honduras, Hungary, Iceland, India, Indonesia, Ireland,Iran (Islamic Republic of), Israel, Italy, Japan, Jordan,Kazakhstan, Kenya, Kuwait, Kyrgyzstan, Lao People’sDemocratic Republic, Latvia, Lesotho, Liberia, Libya(State of), Liechtenstein, Lithuania, Luxembourg,Madagascar, Malawi, Malaysia, Mali, Malta,Mauritania, Mexico, Monaco, Mongolia, Montenegro,Morocco, Mozambique, Namibia, Netherlands, NewZealand, Nicaragua, Niger, Nigeria, Norway, Oman,Panama, Papua New Guinea, Peru, Philippines,Poland, Portugal, Qatar, Republic of Korea, Republicof Moldova, Romania, Russian Federation, Rwanda,Saint Kitts and Nevis, Saint Lucia, Saint Vincent& the Grenadines, San Marino, Sao Tome andPrincipe, Saudi Arabia, Senegal, Serbia, Seychelles,Sierra Leone, Singapore, Slovakia, Slovenia, SouthAfrica, Spain, Sri Lanka, Sudan, Swaziland, Sweden,Switzerland, Syrian Arab Republic, Tajikistan, Thailand,The former Yugoslav Republic of Macedonia, Togo,Trinidad and Tobago, Tunisia, Turkey, Turkmenistan,Uganda, Ukraine, United Arab Emirates, UnitedKingdom, United Republic of Tanzania, United Statesof America, Uzbekistan, Vietnam, Zambia, Zimbabwe.(As at date of publishing).6
PATENTS INFORMATION KITINTERNATIONALPATENTAPPLICATION File InternationalPatentApplication InternationalSearch ReportIssues3-4 monthsAmendmentsOptional Publication ofApplications18 months from Priority Date l19-22 months fromPriority Date PreliminaryExaminationOpinionIssues Reply(optional)PreliminaryExaminationReport Issues CommenceNational Phase inDesignatedCountries30 months fromPriority Date www.spruson.com7
PATENTS INFORMATION KITPATENTQUESTIONNAIREThis questionnaire is intendedto elicit sufficient informationto enable us to preparea patent specification forthe invention. The patentspecification must not onlydescribe the invention insufficient detail to enablea person of ordinary skill toput it into effect, but shouldalso identify the new andadvantageous features of theinvention. Although you maybe familiar with the invention,please bear in mind thatfuture readers of the patentspecification, such as PatentExaminers, may not have thebenefit of your backgroundknowledge and expertise.Please answer any applicablequestions as fully as possible.Your cooperation in providingthe required information willalso assist in minimising costs.1. What is the intended function, purpose orobject of the invention?10. Has the invention been used commercially?(If yes, please provide details.)2. What are the advantages of your invention?[Please list them in the order of importance.]11. Please provide the full name, residentialaddress, and citizenship of each inventor. Ifthere are two or more co-inventors, pleaseidentify the respective contribution of eachinventor (if possible).3. Please provide a written description ofyour invention and its operation, includingdrawings or sketches (if applicable).Please provide a duplicate set of drawingsor sketches with parts of the inventionlabelled. [The description should besufficient for a person of ordinary skill in therelevant field, not an expert, to put it intoeffect. Features which are already knownneed not be described in detail. However,you should clearly describe the features ofyour invention which you consider to benew and advantageous.]4. What are the features (physical or functional) ofyour invention which result in the advantagesmentioned in question 2?5. Are there any possible variations ormodifications of the invention, or partsthereof, which you would also likeprotected?6. Are you aware of any similar apparatus orprocess (relevant “prior art”)? If so, pleaseprovide details of the prior art known to you,and describe any disadvantages or problemsassociated with the prior art that yourinvention overcomes.7. Please clarify in what form/s the invention is tobe commercialised – e.g. product, assembly,kit of parts, or manufacturing, testing or othertype of process.8. List the countries in which you are likely torequire patent protection.9. Has the invention been disclosed publicly, e.g.by public display, sale, advertising, descriptionin published document, etc.? (If yes, pleaseprovide details.)12. In whose name will the patent applicationbe filed? In other words, who owns therights to the invention? (Please provide fullname, address and ACN, if applicable.)13. If the patent applicant is different fromthe inventor(s), how did the applicantderive the rights to the invention from theinventor(s)? For example, was the inventionmade for the applicant by the inventor(s)in the course of his/her/their employmentwith the applicant, or was the inventionotherwise assigned from the inventor(s) tothe applicant? If a contractor was involved,please make this known to your attorney!]14. If the applicant is different from theinventor(s), we recommend that there bea written assignment from the inventor(s)to the applicant (even if the invention wasmade in the normal course of employment).Do you wish us to prepare an assignmentdocument? [Charges apply.]15. Regardless of whether or not your inventionis patentable, its use in the marketplacemay infringe the registered rights of a thirdparty. To minimise this risk, a freedom tooperate search should be conducted ineach country of interest. Would you like usto conduct a freedom to operate search?16. Is the invention to be marketed under a brand(trade mark)? If so, what is the trade mark?www.spruson.comOFFICES IN: BANGKOK BEIJING BRISBANE GOLD COAST HONG KONG JAKARTA KUALA LUMPUR MELBOURNE SINGAPORE SYDNEY 2019 SPRUSON & FERGUSON. Spruson & Ferguson companies are members of the IPH Ltd group, and part of an ‘ownership group’ for the purposes of the Australianand New Zealand Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (see www.spruson.com/about /ownership-group)DISCLAIMERThe information contained in this document is provided for general informational and educational purposes only and does not constitute legal or professional advice.Spruson & Ferguson does not guarantee the accuracy or currency of the information contained in this document, despite making all efforts to ensure it is up-to-date and free fromerror at the time of inclusion. The content of this document is not a complete statement of the law on any subject. Professional advice should be sought before any course of actionis pursued. Moreover, transmission of the information in this document is not intended to create, and the receipt does not constitute, an attorney-client relationship betweenSpruson & Ferguson and the recipient.
Filing a provisional application with the Australian Patent Office establishes a "priority date" for the invention as described in the provisional specification. If the applicant wishes to obtain a patent, the applicant must file a complete application within 12 months of filing the provisional application. Filing the provisional .
Australian Patent No. 692929 Australian Patent No. 708311 Australian Patent No. 709987 Australian Patent No. 710420 Australian Patent No. 711699 Australian Patent No. 712238 Australian Patent No. 728154 Australian Patent No. 731197 PATENTED NO. EP0752134 PATENTED NO.
Patent-Mapper, which maps the location of patents within the U.S., given a selected patent application year, patent state, and patent class. . Along with the patent, the Longitude and the Latitude will also be provided for geolocation purposes. Other information such as invent
TECHNICAL INFORMATION PLEXIGLAS Solid sheet, block, multi-skin sheet, corrugated sheet, tube and rod . Patent EP 530 617 3 Europ. Patent EP 548 822 4 Europ. Patent EP 149 182 5 Europ. Patent EP 733 754 6 Europ. Patent EP 776 931 7 Europ. Patent EP 600 332. PLEXIGLAS Ref. No. 211-1 02/2 Page 4/7
United States Patent [191 Schaefer US00570 1 006A Patent Number: 5,701,006 Dec. 23, 1997 [11] [45] Date of Patent: METHOD AND APPARATUS FOR MEASURING DISTANCES USING FIBER
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Book indicating when the patent was listed PTAB manually identified biologic patents as any patent potentially covering a Purple Book-listed product and any non-Orange Book-listed patent directed to treating a disease or condition The litigation referenced in this study is limited to litigation that the parties to a
No. 2. Frost, The Patent System and the Modern Economy (1956). No. 3. Patent Office, Distribution of Patents Issued to Corporations, 1939-1955 (1956). No, 4. Federico, Opposition and Revocation Proceedings in Patent Cases (1957). No. 5. Vernon. The International Patent System and Foreign Policy (1957). No. 6. Palmer, Patents and Nonprofit .
