Innovation patent application process
Applications for innovation patents are called complete applications. A complete application is necessary to actually have a patent granted whereas a provisional application provides you a priority date and signals your intention to lodge a complete application.
An innovation patent provides a fast protection and is suitable for a device, substance, method or process that does not have the inventive step requirement needed to obtain a standard patent.
The owner of any new and useful invention that involves an innovative step can file an innovation patent application. The process to get a granted innovation patent is not as a stringent a process as for a standard patent.
To be eligible for an innovation patent protection your invention must:
- involve novelty (be new); which means that the invention has not been publicly disclosed in any form, anywhere in the world before the earliest priority date (date at which the application is first filed)
- involve an innovative step; which means the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention
A simple formalities check is conducted to ensure your application is in order. Generally, within 1 month you'll receive notification formally granting you an innovation patent (provided you the filing fees are paid).
Please note that the innovation patent is granted without substantive examination. We do not assess whether the patent is valid, which may make it more difficult to sell or licence.
Filing the application
In order to keep the priority date of a provisional application you need to apply for an innovation patent within 12 months of filing your provisional. If you have an overseas patent application (a convention application) and want similar protection in Australia, you will need to apply for your innovation patent within 12 months of filing your overseas application.
You application form needs to be accompanied by a patent specification.
Publication of details
We publish details (including the invention title) of your unexamined innovation patent (level AU-A) in the Australian Official Journal of Patents at grant, which generally occurs shortly after filing.
Published patent specifications are made available to the public through our website and are sent to certain libraries and overseas patent offices.
Publication is an important step for 2 reasons:
- It sets the date after which anyone using your invention without permission is unlawfully infringing your patent. That is, once you have a certified standard patent, you can take legal action for any infringements that occurred on and after the publication date
- The contents of your standard patent application are no longer confidential. Your invention becomes part of the knowledge of the general public and may therefore subsequently assist in advancing industry and technology.
Note: publication of a patent does not guarantee that the patent is valid.
Examination and certification of innovation patents
Examination and certification of patents is undertaken by us to ensure your patent meets the requirements of the Patents Act 1990.
To have legally enforceable patent rights, you must request that your innovation patent be examined, and pay the required fee. Alternatively, your competitors can also request examination of your innovation patent (e.g. if they own a patent that might be infringed by your invention). If this is the case, they pay half of the examination fee and you pay the remainder. If you don't pay your part of the examination fee, your innovation patent will cease. In addition, the Commissioner may instigate examination of your innovation patent.
During examination you will receive 1 of 2 possible replies:
- a notice that your patent has been successfully certified
- an adverse report explaining why your innovation patent does not meet the requirements of the Patents Act 1990.
Please note that, if the examination request has been made by a person other than the patentee, that person will receive a copy of each adverse report.
Once your innovation patent is examined and certified you can take legal action against an infringing party.
Responding to an adverse report on your innovation patent
Sometimes inventions are not properly described or are indistinguishable from existing technology.
You have six months from the date of the first adverse report to overcome any objections that have been raised as part of the examination process. Once all objections have been overcome your innovation patent will be certified.
Often you can resolve these objections by changing your description or claims. This procedure may be repeated several times, but if all the problems that arise aren't resolved in the six-month time period, your innovation patent will cease.
Once your innovation patent is certified, your competitors may start opposition proceedings to show that your patent is invalid. If opposition proceedings are successful, your innovation patent may be revoked.
Last Updated: 03/4/2014