Patents

A patent is a right granted by the government of a country to the owner of the patent to exclude others from exploiting the invention covered by the patent without the approval of the patent owner.

Australian law provides for two types of patents i.e. standard and innovation patents.

To be patentable in Australia an invention must be:

• a manner of manufacture;
• novel;
• inventive in the case of a standard patent or involve an innovative step in the case of an innovation patent; and
• useful

Also, an invention must not have been secretly used in Australia prior to lodgement of a patent application.

Human beings and the biological processes for their generation are not patentable subject matter.

In the case of innovation patents, plants and animals as well as the biological processes for the generation of plants and animals are not patentable subject matter.

Generally speaking an invention resulting from human activity and having a commercial application will be a manner of manufacture. Natural phenomena, for example the law of gravity, do not constitute a manner of manufacture. A mathematical formula or an algorithm per se also will not constitute a manner of manufacture, but a device utilising the formula or algorithm to produce a useful result is likely to be considered a manner of manufacture.

An invention is novel if it has not been publically disclosed in any form anywhere in the world. Australia does provide a “grace period” for securing valid patent protection even after disclosure has taken place. However, as most countries in the world do not provide a grace period a patent application should be filed prior to any disclosure of an invention.

In the case of a standard patent an invention must involve an inventive step. This is just another way of expressing that an invention must not be obvious. An invention will be obvious if it would have been arrived at as a matter of course having regard to the common general knowledge in the field of the invention. The common general knowledge refers to the general body of knowledge known or used by those in the field of the invention. It forms the background knowledge and experience of those working in that field.

An innovation patent on the other hand must involve an innovate step. An invention will involve an innovative step if it varies from what is known in the relevant field of technology in way that makes a substantial contribution to the working of the invention. This general constitutes a lower threshold than that set by an inventive step.

An invention will be useful or have utility if it achieves the purpose the applicant states it will. This means that by following the directions set out in a patent specification the result claimed will actually be produced.

To be patentable an invention must not have been secretly used in Australia before the filing date of a patent application.

Either the inventor(s) or a person who derives title to the invention from the inventor(s) may be granted a patent.

A standard patent is obtained by filing a patent application at IP Australia. Prior to the grant of a patent the application undergoes substantive examination. Substantive application will only take places following lodgement of a formal request that the application be examined.

Upon passing substantive examination, a Notice of Acceptance will issue. Acceptance of the application will be published in the Official Journal of Patents whereafter third parties will have three months to oppose the grant of a patent. In the absence of any opposition or upon the opposition being successfully defended a patent will be granted.

Unlike a standard patent, an innovation patent does not undergo substantive examination before grant. Rather, once an innovation patent application has passed a formalities check the patent will be granted. It is, however, important to note that an innovation patent can only be enforced once it has been certified.

To be certified a formal request must be made that the innovation patent be examined. Upon passing substantive examination the innovation patent will be certified. Failure to pass substantive examination, on the other hand, will result in the innovation patent being revoked.

Subject to the payment of annual renewal fees a standard patent has a term of 20 years. An extension of term may be obtained in the case of patents for pharmaceutical substances.

Subject to the payment of annual renewal fees an innovation patent has a term of 8 years.

Preliminary patent novelty searches can be conducted at the following website:

http://worldwide.espacenet.com/

Information on Australian patents and patent applications can be located at IP Australia’s AusPat database:

http://pericles.ipaustralia.gov.au/ols/auspat/