Before applying for any patent, you may wish to file a provisional application. Provisional applications establish a priority date, which is handy if you need to prove you were the first to come up with a new invention
Think of a provisional application as a placeholder. It is an inexpensive way of signalling your intention to file full patent application later on. However, filing a provisional application on its own does not give you patent protection.
In order to claim the priority date of your provisional application, you must apply for a patent (standard or innovation) or file a PCT application within 12 months of filing your provisional application. As a general rule, the priority date for your invention is the date on which you first filed a patent application that described your invention in detail. To get the earliest possible priority date on your invention, you can file a provisional application. Establishing a priority date is useful in helping you to get the jump on competitors.
A provisional application also gives you time to determine whether your invention is worthy of further time, money and effort associated with filing an application for a patent. It is also cheaper to file a provisional application than an application for a standard or innovation patent.
If you do decide to apply for a standard or innovation patent, you can use the priority date from your provisional application. This can be particularly useful if there is a dispute over who came up with an idea first.
For example, a competitor may claim they came up with an idea in July 2015, and accuse you of copying their idea as you didn’t file for a patent until January 2016.
However, you actually submitted a provisional application for the idea in February 2015 and after considering your business options you decided to file for a patent 11 months later. In this example, had you not initially filed a provisional application and instead considered all your options before filing for a patent in January 2016, it would be much harder to prove you came up with the idea first.
Some details of your provisional application, such as the invention title and applicant name, will be published in the Australian Official Journal of Patents. However, this will not publicly disclose any of the technical or scientific details of your application.
Standard (complete) patent
A standard patent gives you long-term protection and control over an invention. It lasts for up to 20 years from the filing date of your application.
The invention claimed in a standard patent must be new, involve an inventive step and be able to be made or used in an industry.
An inventive step means that the invention is not an obvious thing to do for someone with knowledge and experience in the technological field of the invention.
Your invention must differ in some way from existing technology. This difference must be something more than the simple application of published information or standard background knowledge.
Before a standard patent can be granted, the application will be examined to make sure it meets legislative requirements. Depending on the circumstances and the type of protection you are applying for, examination can take from six months up to several years.
An innovation patent is peculiar to Australia and has up to an 8 year term. It must have an innovative step which means the innovation must make a “substantial “contribution. It may be obvious.
An innovation patent may be derived from a provisional application so it is best not to file an innovation patent first. An innovation patent can also be derived from a standard patent application.
Options for protection overseas
An Australian patent provides protection only within Australia. To obtain similar protection in other countries you generally have two choices:
Whichever option you choose, you will still end up with separate patent applications in each county. The PCT is simply a method of facilitating the filing of a patent application in a number of countries simultaneously and all patent rights are granted by national or regional patent systems.
A PCT application will go through an examination process according to a set of standards accepted by all the 148 countries which are signatories to the treaty. This makes the process easier if you decide to pursue patent protection in these countries, as a lot of the groundwork has already been done.
An Australian provisional application can act as a priority document for a PCT application if the PCT application is submitted within 12 months of the submission of the provisional application.
Search Options - Patents/Designs (all fees include GST)
1. Subject matter general state of the art searches
The purpose to this type of search is to explore the general patent activity in a particular field. The price of these searches can vary widely. We provide a cost estimate once we scope the work.
2. Patent landscape
The purpose of this search is to identify technical trends over time in a particular field and to identify the major players who are actively developing technology in the field. The price of these searches can vary widely. We provide a cost estimate once we scope the work.
Searches before filing a patent/design application - we have to scope all searches to give cost estimates
What you need to provide to us: patents involve technical solutions to technical problems and concern how the invention works rather than the ultimate result. In order to conduct an effective search we require a problem/solution table setting out all the problems your invention solves and how the invention works to achieve those solutions.
1. Capped price novelty search (this search is not an infringement search)
The purpose of this search is to identify nearest related art that might prevent you getting a patent. Our searchers are ex patent examiners. The search is time limited to a cost of $1650. This includes the cost of analysis and report.
2. Classification Subject Matter Search (this search is not an infringement search)
This search is the type of search carried out by the Patent Office and involves first classifying your invention into the IPC (International Patent Classification) and the US Patent Classification and determining the number of documents that might need to be searched in this "systematic" search. Our fees are approximately $330 to classify the subject matter and develop a search strategy and identify the number of documents that need to be viewed in order to complete the search. We then provide you with an estimate for completion of the search. These searches typically cost from $2,000 upwards. This includes the cost of analysis and report.
3. Infringement search
An infringement search is a country by country based search and again requires determination of the classification and a search strategy at a cost of $330 before giving you a final estimate depending upon the number of documents to be reviewed. This search differs from the capped price search and the subject matter search in so far as we have to look at the claims to see if your invention may fall within the scope of claims. It cannot necessarily be determined from drawings whether a document is relevant so we have to look at individual claims so the documents have to be looked at in more detail. This search covers the possible 20 year life of a patent that you might infringe. These searches typically cost from $2,000 upwards per country. This includes the cost of analysis and report.
4. Design Search (this search covers both novelty and infringement)
A Design Registration covers external shape and appearance of an article. It does not cover function. Quite often there is a design registration and a patent. For example this well known starter bar protection cap shown below was registered by Intellepro in 1991 had both a patent and a design registration and eventually a shape trade mark.
Since registered designs do not have claims but have drawings (see example below) we are able to search both novelty and infringement.
Where your product could have external design features then a design search might be recommended. Design registrations last for ten years so similar types of searches as set out above, but of the Designs Register. These searches typically range in costs from $500 to $2,000 per country.