The patenting process in Australia

Obtaining a patent is essentially a two-step process, with the two steps being spaced 12 months apart. The first step is to file an Australian provisional patent application for your invention, which lasts for 12 months. This is done so that you can test the market for your idea and to obtain the earliest possible date from which to claim rights to your invention - much like an option to protect your invention.

The second step is to file a complete patent application within 12 months of filing the provisional patent application in Australia. You also have the option, instead of only filing in Australia, to file overseas at this stage.

If you are only interested in filing in 2-3 other countries, then we would recommend filing directly in those countries. If you are worried about your prospects of success and you will be filing in more than 3 countries, we would recommend filling a so-called "international" application (also called a Patent Cooperation Treaty application).

This allows you to defer filing complete applications in other countries for an additional 18 months without any loss of patent rights AND provides you with a search report which informs you how patentable your invention is. Here, you can spread the costa of patenting over 30 months before you have to file in each country of interest.

The complete patent application will claim a first (or "priority") date from your provisional patent application.

Advantages of first filing a provisional patent application

Complete patent applications are more expensive to file than provisional patent applications and it is not possible to add additional matter to a complete patent application once it has been filed.

The reason for this two-step approach to patents is therefore to give you time to determine if there is a market for your invention, and also to give you time to refine your invention into its "perfected" form prior to complete patent application.

Furthermore, it must be borne in mind that any modifications that you make to the invention as contained in the provisional patent specification must be kept secret until those modifications have been captured in a second provisional patent application or are included in the eventual complete patent application.

Rule of thumb: keep improvements secrets until they have been captured a patent application.

Obtaining enforceable patent rights in Australia

It is important to note that a provisional patent application does not provide you with an enforceable right (i.e. you are not allowed to take steps to stop other people from exploiting your invention based only on the provisional patent application).

A provisional patent application is merely a mechanism for protecting your invention while commercial potential. You only obtain an enforceable right once a complete patent application form of your invention has been filed AND a patent has been granted by the Patent Office.

However, should your competitors start copying your invention before a patent has been granted, it is possible in certain cases to expedite the granting of your patent. Patents go through a long period in which they are examined by patent examiners.

These are Patent Office employees with advanced technical degrees and access to the best databases in the world. They will review your patent application and do a search to see if any aspects of your patent must be trimmed back because of prior inventions that disclosed those aspects before you filed your patent application.

This is a challenging time for patentees, as they don't know whether they will be left with a patent which is still valid, or which makes commercial sense to continue pursuing. This is another reason why it is important to put as much information in your patent application as possible and to work closely with your patent attorney to ensure that all aspects of your invention are covered.

Marking patented products with patent numbers

In most countries, if a provisional patent application has been filed, the article may be marked with the words "Provisional Patent application number" followed by the patent application number.

If a patent has been granted an article may be marked with the words "Patent number" followed by the patent number. It is not permissible to mark an article as above if a patent application has not been filed, or if a patent has not been granted.

Cost of Australian patent applications?

There are three categories of expenses for the typical patent application: (1) attorney fees; (2) patent office (governmental) filing fees; and (3) drawing fees. Of the three, the most significant expense is the attorney fees.

We prepare and file your patent application for a fixed fee, based on the complexity of your invention and the work required to prepare a quality patent application to protect it.

For inventions of low to medium technical complexity, typical costs for preparing and filing an Australian provisional patent applications with technical drawings are usually in the range of $2999 to $4999, depending on the complexity of the invention.

The more complex the invention, the more it costs to write the patent application. Our cost estimates include all government fees and taxes. However, after consulting with you, we will be able to provide you with a more accurate accurate cost estimate for preparing and filing the patent application.

We will only proceed once we have received your express instructions to do so and we'll take no further actions in this regard should you not wish to obtain patent protection for your invention. Bear in mind that biotech, life sciences, computer, and complex electronic inventions are usually from $6500 upwards, up to $10,000.

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Filing of a complete patent application in Australia only іs usually about the same price as the provisional application if we drafted the provisional application, but it may be in higher if you have made many developments to your original idea that were not captured the provision al application.

At the time of filing your complete application, you will have a much better idea of the commercial potential of your invention and whether it is commercially sensible to file a complete patent application(s).

While there is a lot of flexibility in the patent system, if you miss the 12-month deadline for filing a complete (AU or PCT) application, then you will have forfeited any chance you may have had to keep your protection in place.

It's also worth bearing in mind that any improvements that you have made that weren't covered in your original application, can be saved by filing a further provisional application in the 12-month period (or at the time of filing the complete application), provided you had kept those aspects of the idea secret until such time as the additional patent applications have been filed.

When the patent application is being examined, the patent examiner will find prior documents which will affect your patent rights and which might narrow your patent protection. These "prior art" documents need to be overcome and to do this we will need to file arguments and also changes to the patent application. This may happen 2, 3, or even 4 times before your patent is granted. Each round takes a lot of effort and time and it usually costs in the order of $1500 per round to get this done.