FOR IP PROFESSIONALS

Patent FAQs

Applying

Am I able to file patent applications via email?

Unfortunately we are unable to accept patent applications via email as email is an avenue for enquiries only. Anything to do with the prosecution of a patent must be faxed, posted, lodged electronically through our on-line services, or lodged in person at one of our IP lodgement points.

Can my cousin and I patent a product together even though we live at separate addresses?

Yes. There can be any number of applicants/owners on a patent, as is often the case, when there is more than one owner. The main issue is that the applicant/owners can only have on Australian address for legal service where we can deliver legal documents to.

If we have a patent in Australia only, can a product be made elsewhere e.g. in China by someone and sold in Australia or does our patent stop even the sale of a similar product?

If you have a patent in Australia your protection covers Australia regardless of where the product is manufactured. As the owner of a patent it would be up to you to defend your Intellectual Property. If someone is getting recompense/profits without your permission you may seek compensation via the courts.

What are the time frames for applying for a patent conversion?

Standard patent applications and innovation patent applications can be converted to provisional applications. A request to convert must be made between the filing date of the application and either 12 months from the filing date of the application, before the date the application is accepted or, for a standard patent application, three weeks before its publication (whichever is the earlier). For innovation patent applications, this time period can be quite short. The conversion has to be completed by the time the application is accepted. This is generally between 1 and 3 weeks from the filing date of the application (unless there are formalities objections) and often can be even shorter. For this reason, you need to act immediately if you need to change from an innovation to a provisional patent application.

What is the difference between an address for legal service and an address for correspondence?

When you file an Australian patent application you may provide an address for correspondence to which correspondence will be sent. The address for correspondence need not be located in Australia. However, you will require an Australian address for service which must be either: i) an address in Australia where documents may be served on you or your agent. This may be the address of a solicitor or attorney, a residential or business address; or ii) another address in Australia where it is practicable and reasonable for Australia Post, or a person acting on behalf of Australia Post, to deliver mail. The address may be a post office box, locked bag or postal delivery point. You can only have one address for correspondence, and one address for service. The addresses can be the same if both are located in Australia. It is important to notify us of any changes to the address for correspondence or address for service immediately to ensure that all documentation is sent to the correct address.

What rights do I have to an invention as an employee?

Your employment contract may specify that any intellectual property developed during the course of your duties will belong to your employer. We do not administer laws relating to employee-inventor issues. Employee-inventor contractual agreements are made between the parties concerned. An IP Professional may be able to advise you of your rights.

Examination

When do I request examination on my standard patent application?

The examination process is a compulsory element for standard patent applications and must be conducted if you want a patent to be granted on your application. A request for examination must be made within 5 years of filing your application. If this is not done your application will lapse. However, it is more usual, after a certain period - usually around 55 months from the earliest priority date - for the Commissioner to direct that you request examination if you have not done so already. Once a direction is issued, the request for examination must be filed within 2 months of that direction date or your application will lapse. Once examination has commenced, and if an adverse examination report has issued, you have 21 months from the date of that first report in which to gain acceptance of your application or it 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 gain acceptance of your application.

Innovation v Standard Patent

After obtaining an innovation patent, can you convert it to a standard patent a few years later?

No. It is only possible to convert an innovation patent application to a standard patent application prior to acceptance which takes approximately 4 to 8 weeks from filing.

Besides the length of coverage, what is the difference between an innovation and standard patent? Is the protection the same? Can you apply for either or do you have to apply for a specific one first?

A standard and innovation patent are two totally different types of patents. An innovation patent is a protection option which is designed to protect inventions that are not sufficiently inventive to meet the inventive threshold required for standard patents. As an innovation patent is not examined before it is granted, it is inexpensive and simple to obtain, but you can't enforce it until after examination has been carried out and the patent is certified. An innovation patent is examined to determine if it meets the relevant requirements of the Patents Act 1990 before the patent is certified. Certification is not automatic. The most appropriate choice of patent application would depend on the invention in question. Does it meet the requirements of a standard patent as explained above or does it fit into the category of an innovation patent?

Why does an Innovation patent only take 2-3 months to be granted, and a standard patent takes longer?

An innovation patent is not examined initially. It is granted once the formality requirements have been met. Please note that a granted innovation patent is not defendable in court until it has been examined and certified. A standard patent application must be examined before a patent can be granted and there are many factors that influence the time frame.

International

What are the requirements to enter the National Phase?

To enter the National Phase, you will need to give us:

  • A request in English requesting to enter the national phase for the relevant PCT application
  • The filing fee
  • A Verified Translation of the PCT application if the WIPO publication of the PCT application is not in English, and
  • An Australian address for service.

What is an international type search?

An international type search is designed to assist you in deciding at an early stage whether you should seek protection through the PCT route. The search can be carried out if a provisional patent application has been filed, which is what the search will be based upon. The search is essentially similar to a PCT International Search. The search is made on the basis of claims, the description, or a search statement. This type of search is limited because the inventive concept may not be clearly defined. An international type search should be requested within ten months of filing a provisional application After having this search carried out, the applicant may decide to file either a PCT or national application. Alternatively they may decide not to proceed.

Opposition

How do I request the documents on a patent file?

You are able to request the documents on a patent file under Section 55 of the Patents Act 1990. Fees apply for this service. A Section 55 request must be made in writing, clearly identifying what documents are required.

Ownership

Can I assign my patent rights to another party?

An applicant or patentee may assign their ownership rights in a patent/patent application to another party (individual or company). In order to assign the ownership or interest of a patent/patent application you are required to:

  • Advise us in writing of the change
  • Clearly identify the patent/patent application being assigned
  • Supply documentary evidence of the change in ownership such as a deed of assignment, merger document, simple letter of assignment, probate document or declaration. This document may be a copy (the original document is not required) and must contain the following information:
    • Date
    • Full name and address of all parties/companies
    • Indication of whether it is whole or part interest that is being assigned
    • Signatures
    • Patent application number.

Patent of addition

I have filed a provisional application for my invention and have since made some improvements or modifications. Should I apply for a patent of addition?

Usually not. Most likely you will want to file a further provisional application to establish a priority date for your modified invention. When you file your complete application you will generally be able to associate it with both provisionals and you will not need a patent of addition. Also, you can only file a complete application for a patent of addition after you have filed a complete application for the main invention.

If my parent patent ceases before my patent of addition has been granted, does my application for a patent of addition cease as well?

No. However, your application cannot continue as an application for a patent of addition because you must have a "live" parent. If you want your application for a patent of addition to continue, you will need to amend its request form to make your application for a patent of addition an ordinary application for a standard patent. This is usually done when your application is examined. Please note that if you allow your parent to cease before the patent of addition has been granted, the parent specification is not automatically excluded from the considerations of inventive step during examination of your application for a patent of addition.

In my complete specification there is a preferred embodiment that has not been claimed. Can I get a patent of addition for that preferred embodiment?

No. If something has been described in your parent patent, it cannot be considered as an improvement or modification of the main invention, and so you cannot get a patent of addition for it. You may be able to amend the claims of the complete specification to protect it, or file a divisional application.

Is the specification of a patent of addition prepared any differently from any other complete specification?

No. The complete specification and claims should be drafted in the same manner as for an ordinary complete specification. However, a useful way to draft the specification is to identify the main invention and then describe the improvement or modification that you have made. Also, a useful variation that is permitted is the use of a reference in the independent claims of the patent of addition specification to one or more claims of the parent specification, for example, '1. A bed sheet tensioner as claimed in any one of claims 1 to 6 of Patent No. 654321, wherein...'

Provisional Specification

Can I get a copy of a provisional specification?

A provisional specification is held in confidence by us and will not become open to public inspection (OPI), which means published, unless an associated complete patent application is filed and subsequently becomes OPI. The only information of the provisional that is published is bibliographical information such as the provisional application number, applicant name, title, and filing date. You are only able to request a copy of a provisional specification, if the associated complete patent application has been made OPI. The request must be in writing, clearly stating the provisional number, and be sent to us. A fee applies for this service.

Last Updated: 05/7/2013

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