Standard patent application process
Applications for standard 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.
The subject matter of a complete application for a standard patent needs to be new (novel), inventive, and useful. The term of the standard patent is 20 years.
The invention will be referenced against background knowledge in its technical field. This is sourced from common work practices as well as standard texts and handbooks, technical dictionaries and other material in the field.
To be eligible for patent protection your invention must:
- involve novelty (be new)
- 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 inventive step
- the invention must not be obvious for someone with knowledge and experience in the technological field of the invention
The process of granting a standard patent usually takes up to 5 years.
Filing the application
In order to keep the priority date of a provisional application you need to apply for your standard patent with 12 months of filing your provisional. If you have a patent application overseas (a convention application) and want similar protection in Australia, you will need to file your patent application within 12 months of filing your overseas application.
You application form needs to be accompanied by a patent specification.
Publication of details
Details (including the invention title) of the unexamined standard patent application (level AU-A) is published in the Australian Official Journal of Patents about 18 months after the application's earliest priority date.
Published patent applications 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 two reasons:
- It sets the date after which anyone using your invention without permission is unlawfully infringing your patent. That is, once you have a granted 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.
If your standard application is accepted, the patent is republished as an AU-B level publication. If your accepted standard application is subsequently amended, it is republished as an AU-C level publication.
Requesting examination of standard patent applications
After a standard patent application is submitted you must request examination within 5 years of the filing date. Typically, after 4 years from filing your application we will direct you to request examination if you have not done so already. You must request examination within 2 months of the date of this direction or your application will lapse.
Once examination is requested you can normally expect a reply within about 12 months, depending on our workload.
After examination, either an adverse report or a notice of acceptance is mailed. If it is an adverse report, you will have the opportunity to make changes to your application to overcome the objections in the report.
In response to your changes subsequent adverse reports may be issued until all objections have been overcome. Once all objections are overcome, your application will be accepted.
If no response is filed within 21 months from the date of the first adverse report, your complete application will lapse.
Similarly, if you have not successfully addressed all the issues in the adverse reports within 21 months from the date of the first adverse report, your complete application will lapse
Important: If you request examination on or after 15 April 2013, you will only have 12 months from the date of the first adverse report to overcome the objections or your application will lapse.
Acceptance, opposition and grant of standard patent
Once all objections in the examination report are overcome, your application for a standard patent is accepted. Before the patent is granted, other parties (opponents) have three months to start opposition proceedings.
The most common reasons for opposing the grant of standard patents are:
- the application is identical or very similar to another patent application
- the patent applicant is not the true owner of the application
The opponent must show that your standard patent, if granted, would be invalid.
When an opposition is filed, the patent applicant and the opponent each have an opportunity to submit evidences.
A hearing is then held before a Hearing Officer, who decides whether or not the opposition succeeds. If the opposition is successful, the patent applicant is usually given an opportunity to amend their patent application to overcome the problems.
If either party disagrees with the Hearing Officer's decision, they can file an appeal with the Federal Court of Australia.
Less than 2% of accepted standard applications are opposed, but if your application is opposed, you should consider consulting an IP professional.
If no opposition is filed and the acceptance fees are paid, your accepted standard application is sealed and a patent deed is sent to you.
What happens if I miss a deadline?
You may need to apply for an extension of time to restore a patent or patent application that has lapsed or ceased because you failed to pay a fee or take some other action in time.
For example, perhaps you have lost your priority rights because you did not file a complete application within 12 months of your provisional application.
To gain an extension of time you must explain in a declaration the chain of events that caused you to fail to take the action you should have done. You will need to pay any fees associated with your extension of time request and pay any unpaid fees (e.g. renewal fees). The outcome of this request will be assessed on a case by case basis. There is no guarantee that you will get the extension of time you requested.
Last Updated: 03/4/2014