The Patent Application Process Explained
A patent gives you exclusive monopoly rights over your invention for up to 20 years.
Obtaining a patent involves filing a patent specification that describes how your invention works. An example of a patent specification can be seen here.
A professionally drafted patent specification maximises your scope of protection and should cover obvious variations of your invention.
Below, we cover the seven steps required to patent protect your invention in Australia and overseas.
7 steps to patent protection
Step 1 – File a provisional patent application
For your invention to be patented, it must be novel (new) over all public knowledge on the day your first patent application is filed:
Your patent attorney will work with you to understand how your invention works in order to draft a patent specification which protects your invention (and any obvious modifications).
A provisional patent application is a great place to start because:
- it establishes your invention’s earliest filing date (the “priority date”)
- you can deter competition by marketing your invention as “patent pending”
- it secures pending protection internationally for one year while you finalise your invention
- it doesn’t get published for 18 months so competitors can’t know what you have applied to protect
- it allows the Australian Patent Office to assess the patentability of your invention
Do not publicly disclose your invention until you have filed your provisional patent application.
Even accidental disclosures can invalidate patent protection.
Patent attorneys are bound by client-attorney privilege and will treat discussions with you as strictly confidential.
Step 2 – File an international PCT patent application
This international-style patent application keeps your patent protection pending in 150+ countries for another 18 months.
The PCT application is a cost-effective way to keep countries open to patent protection while you determine which ones to commercialise and secure protection in.
- File your PCT application before your provisional patent application expires.
- The PCT application keeps your patent rights pending in major jurisdictions, including the US, the EU (including the UK), China, Canada and Japan.
- A patent search is conducted on your PCT application and indicates if your invention is patentable.
- You can respond to any issues raised by the search. This can be useful if investors, distributors etc. want to know your prospects of patent protection
- Some countries are not parties to the PCT (Patent Cooperation Treaty). You will need to file standard patent applications directly into these countries (e.g. Argentina, Bangladesh and Taiwan)
Step 3 – File standard patent applications in each country of interest
18 months after filing your PCT application, it matures and branches off into individual patent applications filed in each country where patent protection is important to your commercial strategy.
- Patent offices are not bound by the search conducted on your PCT application
- We work with an international network of patent attorneys to ensure your patent applications satisfy patent laws overseas.
Step 4 – Have your standard patent applications examined
National patent offices now examine your patent applications to determine whether your invention is worthy of patent protection.
The patent offices will search for information published before your invention’s priority date and try to argue your invention is not novel or inventive.
- Expedited examination of your patent application can be requested if there are pressing commercial reasons (e.g. your invention is being copied)
- It can be valuable to keep your patent rights pending so that competitors can’t determine your actual scope of protection
- The search results of your provisional application or your PCT application can indicate how your standard applications will perform under examination
Step 5 – Respond to any patentability objections
It is common for patent offices to initially raise objections. After all, they must ensure patents aren’t granted to existing technologies.
A typical patent office objection sounds like this:
We’ve found some documents which were published before your invention’s priority date.
The documents disclose your invention, or something like it.
As such, we don’t think your invention is novel or inventive and thus it shouldn’t be granted a patent.
- Facing objections is a standard part of the process and your patent attorney will devise a strategy to overcome them
- Objections are typically addressed by amending your patent specification to adjust the scope of protection, and/or filing arguments that the objections have been incorrectly made
- Fees for responding to objections are country-dependent and vary with how complex the objections are
Step 6 – Patent applications are accepted
Once all objections (if any) are overcome, your patent applications will be “accepted”.
Accepted doesn’t mean granted, but you’re practically at the finish line.
During the acceptance period (usually two to three months), third parties will have a chance to oppose the granting of your patent.
- The vast majority of accepted patent applications are not opposed and proceed smoothly to grant.
- Having an accepted patent application or granted patent in one country can greatly assist in the examination and granting of your patents in other countries, including fast-tracking the whole process.
Step 7 – Patents are granted
You’ve addressed all patentability objections, no one has opposed your patent applications and now you have granted patents around the world protecting your invention.
- Enjoy and benefit from your technological monopolies.
- License your invention to third parties for licensing fees, or collect royalties.
- Monitor competitors and pounce if you detect any infringing activity.
- Continue investing in R&D to bring new innovations into the world