Patents

The intellectual property system has been designed to encourage the spread of new technologies by giving their owners exclusive rights. For example, a patentee in an export market has the exclusive right to sell and make the invention in the export market. An owner of a trade mark in relation to a good or service has exclusive rights to use that brand in relation to the good or service.

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Companies that embrace the development of intellectual property have a competitive advantage and key differentiator in the market. Leveraging intellectual property is an excellent growth opportunity for companies. 

Here are some elements that can form part of an IP strategy. 

• Freedom to operate 
• Attracting investment and erecting a barrier for competitors 
• IP culture 
• Enforcement 
• Brands and trademarks 
• Annual review 

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A standard patent application is examined by the national or regional patent office with which it is filed. Only if the application passes examination will a patent application be granted. 

The standard patent application will generally follow at least one of a provisional patent application and an international patent application, however it may be the first filed application. 

Examination usually will not commence until at least a year after the standard patent application is filed. Some patent offices will accept a request to expedite examination. Such requests can be expensive and complicated in the US. 

The patent office will conduct a search for documents published before the standard patent’s priority date (usually the filing date of the corresponding provisional patent application) that in the opinion of the patent office demonstrates that the invention claimed by the standard patent application lacks novelty and inventive step (that is, it is obvious). The search focusses on published patent documents, however, patent offices are increasingly relying on other types of publications, including web sites and books. 

The patent office also will check that: 

• the claims are clear; 
• the claims are well supported by the detailed description of the invention in the standard patent application’s specification; and 
• there is only one invention. 

Other grounds for invalidity are also considered by the patent office. 

The applicant then has the opportunity to consider the patent office’s objections, and provide a reasoned response, possibly with amendments to the specification that address the objections. 

There may be more than one examination report issued that requires a response. 

After overcoming all of the objections of the patent office a patent may be granted. 

In the case that the the application is finally rejected, it is in many cases possible to escalate to an appeal or hearing. 

In Australia, a complete patent application may be filed for an invention. Only a complete patent application can result in the grant of an Australian patent. A complete patent application can be either a standard patent application or an innovation patent application.

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In most cases, an inventor first has his or her patent attorney prepare and file a provisional patent application. The provisional patent application is prepared by the patent attorney with a view to the law that governs the validity of patent applications and patents generally. The law governing the validity of patent applications is complex and generally needs the expertise of the patent attorney to be successfully negotiated.

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The filing of an International Patent Application (“PCT application”) is generally recommended.  The PCT application is  filed before filing patent applications in each jurisdiction or country that you wish to obtain a patent.  The PCT can be the first filed application for an invention, but more usually, a PCT application is prepared and filed by the anniversary of a provisional patent filing because this approach defers costs, provides time to develop product concepts, and generally provides more flexibility.

An International Searching Authority considers the PCT application and issues a search report and written opinion stating their view on the patentability of the invention. We recommend that an optional Preliminary International Examination of the PCT application be requested, which provides an opportunity to respond to the written opinion and obtain a clear examination report. The outcome of the examination provides useful information on the approximate prospects of national applications.  A clear examination report, while not binding, may persuade a national patent office to grant a patent, and is consequently worth while pursuing.

The PCT application defers filing of national applications and the associated costs – which can be significant –  by 18 months.  For some companies, particularly start up companies, this time can be used to continue to develop products, test the market, and obtain funds for the later more expensive stages of the patent application process.

There are a few stages to the patent application process. It usually takes at least a few years to go through all the stages. The later stages are the most expensive so most people try to delay them as long as possible.

In the time before you officially file a patent application, make sure to keep your invention secret. This is really important. If you don’t keep it secret, you may ruin your chance of getting a valid patent. An experienced patent attorney can tell you more about what you can and can’t do at this stage.

Once you’re ready to prepare a patent application, you need to know which aspects of your invention can be patented. An experienced patent attorney can help with this.

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A patent can be a very powerful commercial tool of significant strategic value. However, a patent is not appropriate for all new ideas.

Patent’s are very good for inventions that can be easily reverse engineered, for example a mechanical device. In this case, a person cannot simply copy the mechanical device and avoid the patent.

Some inventions are processes/methods. The output of a process may not reveal what the process is. Consequently, competitors obtaining a sample of the output may find it difficult to copy the process. Provided that you can keep the process secret, a patent may not be necessary. In fact, a secret may be preferable as it does not expire as a patent does. It may be difficult, however, to keep the process secret in which case a patent is preferable. Also, others may independently discover the process in which case the secret will not assist in preventing competition. It can be a difficult decision whether or not to file a patent and attorney advice is strongly recommended.

Other inventions can not be patented, for example a recipe. If a patent application is filed then no patent will result for such an invention however the contents of the patent specification will be published revealing the detailed workings of the invention. In this case, a lot has been given away for no gain.

Patents can be expensive. Patents are generally only suitable for inventions that have commercial value and are likely to produce income that will cover the costs of obtaining patents.

Keep it secret … Disclosing your invention to others before you file a patent application is generally likely to invalidate the patent application. Consequently, it is important that you keep your invention secret until a patent application is filed. In some circumstances, disclosing your invention to a person may not invalidate the patent application provided that the person has signed a non-disclosure agreement.

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Destroying your chance to patent an invention is easy. Here are several traps and how to avoid them.

The trap of early disclosure. Every couple of weeks or so, I receive an enquiry from a business owner with an invention they wish to protect with a patent. We have a very pleasant conversation about how effective the invention is. Then I am unexpectedly deflated by their revelation that their invention is selling well.

Disclosing the invention before filing a patent application restricts, and in most cases destroys, your chance to patent the invention. Disclosing your invention generally includes, for example:

• Selling, or offering to sell the invention
• Telling others about the invention
• Providing gifts or samples of the invention

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