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Typical Steps in Securing Patent Protection.
As mentioned in our overview article, patent rights must be pursued separately in each country for which protection is required. The following outline describes some of the more common steps used to secure patent protection in each country of interest. Many variations are available, and Churchill Attorneys can provide more detailed advice specific to your needs.
Step 1. Filing of a Provisional Patent Application.
The patenting process often starts with the filing of a provisional patent application by your patent attorney. This type of application is never examined nor is it ever granted, lapsing 12 months after the date of filing. Provisional applications are typically filed in the early stages of development of an invention, and often before the inventor has a full understanding of the invention or its worth in the market.
The rationale behind the filing of a provisional is to generate a potentially valid and early “priority date” for your invention. This is the date at which your invention is assessed for novelty and inventiveness against the “prior art” (publications and acts that occurred before the priority date).
As an Australian inventor, you are not compelled to file your provisional application with the Australian Patent Office. Indeed, if you anticipate seeking a granted patent in the US we routinely recommend filing with the United States Patent and Trademark Office. This route provides the application with an earlier filing date under U.S. law than would be the case with an Australian provisional filing.
Step 2. Filing of a Complete Patent Application.
As mentioned above, a provisional patent application lapses at 12 months after the filing date. If you wish to maintain the priority date of the provisional it is necessary to file a complete patent application before the 12 month lapsing date. Normally, further technical material (such as data or further embodiments identified by the inventor) is added into the complete specification.
If patent protection only in Australia is sought, then the complete patent application is filed with the Australian Patent Office. This application is subsequently examined (pursuant to payment of a fee) and will be granted if patentability requirements are satisfied.
If international patent protection is required, then a complete application under the Patent Cooperation Treaty (PCT) is generally filed before lapsing of the provisional application. The main advantage of a PCT application is that it delays the time in which you need to enter national phase (see below), to 30 months from the earliest priority date of the application. Entering the national phase is an expensive process, and inventors will often delay the day of reckoning until the value of the intellectual property is more certain or investor funds are secured.
If you choose not to file your complete application under the PCT, it is then necessary to enter national phase directly in all your countries of interest before lapsing of the provisional application.
3. Examination and Grant of Application(s).
Whatever route to patent protection is chosen, at some point you will be faced with at least one patent application being examined by an examiner in a national patent office. Patent examiners are public servants having technical degrees (and often advanced degrees), who are trained in the patent law of their particular jurisdiction. The Examiner’s aim is to prevent the patenting of inventions that do not meet the bar to patentability set in that country. In performing his or her duty, the Examiner will assess the novelty and inventiveness of the invention claimed in the application, as well as other factors such as how fully the invention is described in the complete specification. If the Examiner considers that the bar is not met, an adverse examination report is issued. Your patent attorney will assess the objections and may recommend various legal argumentation and/or amendment to the patent application in order to overcome the objections raised by the examiner. This process of may go back and forth a number of times before the Examiner accepts the application. After acceptance, the patent is granted pursuant to the payment of certain fees.
