Home PatentsThe
Application Process for your PatentThe
examination process
The examination process
What
does examination involve?
How
long will it take?
What
if there are problems with my application?
Publication
Acceptance,
opposition and grant
How
long will my patent be valid?
For
further information on patents
What does examination involve?
This is determined by what kind of patent you choose-innovation or standard. The
progress of your application will also depend on you (or your attorney) paying
the Patent Office fees required at various stages.
All examinations and sealing of patents are undertaken at the Patent Office
of IP Australia in Canberra to ensure your application meets the requirements
of the Patents Act.
Innovation Patents
- Innovation patents are not automatically examined. To fully enforce your
rights to your innovation within the marketplace, your patent must be certified
following an examination.To request an examination, you must complete a Request
for Examination form, and pay the required fee. For more information on the
examination process of an innovation patent, please click
here.
Standard Patents
You may request early examination of your standard patent application, although
generally
between 1 and 2 years after filing we will direct you to request an examination
if you have not already done so.
Once we have directed you to request examination, you have 6 months to do so.
If you don't, your application will lapse.
It may be to your advantage NOT to seek early examination and grant
of a patent.
Delaying examination allows you more time to assess your progress in commercialising
the invention and the value of continuing the patenting process.
When granted, your patent rights can be enforced back to the publication date
of your complete application so there is usually no benefit in finalising your
patent quickly unless you need to take immediate legal action against an infringer
or require a granted patent for licensing or financing negotiations.
If you have applied for a patent for the same invention overseas, you are required
to give us the result of any official search carried out.
back to top 
How long will it take?
You can normally expect to receive a reply to your request for examination
within about 14 months depending on our workload. More detailed response times
and other Service level Commitments can be found in our Customer
Service Charter.
This will either be an adverse report (a report giving reasons why your application
does not meet the requirements of the Patents Act in its present form) or a
notice that your application has been accepted.
What if there are problems with my application?
Few applications are approved in their initial form.
The patent examiner will inform you of any deficiencies and give you the opportunity,
within certain time limits, to make changes to your application.
Usually problems occur because you did not fully describe your invention when
you filed your application, or because your claims are too broad and cover something
that is already known.
If you receive an adverse report, additional help is available in our information
sheet Responding to a Patent
Examination Report which we usually send to you at the same time.
When we are satisfied that you have corrected the deficiencies, your standard
application will be accepted, or your innovation patent will be certified. However
if the problems cannot be overcome, your standard application will be refused
or your innovation patent will cease, and you will not obtain legal protection
for your invention. For a standard patent, there is a period in which other
people can oppose your application. For an innovation patent it will be certified
at this stage, and it can be opposed at any time from then on.
back to top
Publication
Publication of your unexamined standard application (level AU-A) occurs about
18 months after your application's earliest priority date in the Australian
Official Journal of Patents (AOJP). Published patent specifications are
made available to the public and are sent to certain libraries and overseas
patent offices.
Innovation patents are published at grant which generally occurs shortly after
filing. This means that the contents of your patent specification are no longer
confidential.
It also means that you can take action if someone uses your invention without
your permission. Once we have granted a standard patent or certified an innovation
patent, you may be entitled to take legal action for any infringements that
occurred from the date we published your application.
Please note: Publication of your patent DOES NOT guarantee grant of
a patent.
If your standard application is accepted, the patent is republished as an AU-B
level publication. A comparatively small number of standard applications are
first published when accepted.
If your accepted standard application is subsequently amended it is republished
again as an AU-C level publication.
back to top
Acceptance, opposition and grant
After the publication of acceptance of your standard patent application, others
then have 3 months to start proceedings to show that your patent, if granted,
would be invalid. However, less than 2% of accepted applications are opposed.
If your standard patent application is not opposed, we will seal it and send
the patent certificate to you after the end of the opposition period.
How long will my patent be valid?
The maximum term for a standard patent is
20
years. The
maximum term for an innovation patent
is 8 years. This is counted from the day you filed your complete
application.
There is, however, special provision for an extension
of term for pharmaceutical patents.
It is your responsibility to remember to pay the annual maintenance
fees.
We cannot help you enforce your patent rights. You should consult an IP
professional if you are concerned about someone infringing your IP rights.
For further information on patents
We have an excellent library of information sheets, guides and other documents
on a wide range of patent subjects, as well as application forms. These are
available for download from the Resources
> Forms & publications > Patents section of this site.
|
