The Patent Application Process Explained
A patent is an immensely powerful legal right which grants you an monopoly over your invention for up to 20 years. With a patent, you can have exclusive rights over the manufacture, distribution, sales and even licensing of your invention.
Given how powerful patents can be, obtaining a commercially meaningful patent can be quite involved. A crucial step in the patent application process is the drafting of your patent specification — this is a technical and legal document which describes how your invention works and the breadth of your monopoly. An example patent specification can be seen here.
A well-drafted patent specification seeks to meet the various patent law requirements around the world, while also maximising your scope of your protection. A good patent attorney will help you protect the key inventive concept(s) underlying your invention, and not just one specific embodiment that you have come up with.
On this page, we cover the seven steps required to patent protect your invention in Australia and overseas. We encourage you to follow along by downloading our patent flowchart below.
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 and draft a patent specification to protect 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 international rights for one year while you finalise your invention
- it allows the Australian Patent Office to assess the patentability of your invention
- your patent specification isn’t published for 18 months so competitors can’t know what you have applied to protect
Do not publicly disclose your invention before filing your first 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
The PCT application (Patent Cooperation Treaty) is an international-style application which keeps your patent protection pending in 150+ countries for another 18 months.
The PCT application is a cost-effective way to keep your options open while you determine your commercialisation strategy and the markets you wish to enter.
Some tips for filing a PCT application are below:
- 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
18-19 months after filing your PCT application, you will need to designate the precise countries in which you wish to apply for patent protection.
Hopefully, after the 30-31 month runway paved by your provisional and PCT application, you will have a clear idea of which markets you wish to target.
We recommend being selective and strategic when choosing which countries to protect your invention in because patent costs increase with the number of countries chosen. This is partly because overseas attorneys often need to be engaged to assist with your overseas patent applications.
Step 4 – Have your standard patent applications examined
The national patent offices of each country you selected now examine your respective patent applications to determine whether your invention is patentable.
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.
The examination process can take several years, although can be accelerated if there are pressing commercial reasons (e.g. your invention is being copied). That said, it can often 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 published before your invention’s priority date.
The documents disclose your invention, or something like it.
As such, your invention is not novel or inventive and shouldn’t be patented.
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.
Crucially, the amendments you can make must be limited to the content disclosed in your patent specification filed years ago with your first patent application. This is an example of why it is vital to get your first patent specification drafted properly.
Step 6 – Patent applications are accepted
Once all objections are overcome, your patent applications will be accepted.
Accepted doesn’t mean granted, but you’re practically at the finish line. Additionally, having an accepted application or granted patent in one country can assist with the examination of your patent applications in other countries.
During the acceptance period (usually two to three months), third parties will have a chance to oppose the granting of your patent. That said, the vast majority of accepted patent applications are not opposed and proceed smoothly to grant.
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. Go forth and reap the rewards from your technological monopolies, and strike up licensing deals with third parties.
Of course, if your invention enjoys commercial success, copycats are going to be on your heels, so make sure you monitor potential competitors and pounce if you detect infringing activity.
The journey towards patent protection can be a long but rewarding one. From the filing of your first provisional patent application, to receiving granted patent certificates in your target markets, the patent application process can easily span four or more years.
Given the long road ahead, it is important that you work with a patent attorney who has the right technical qualifications to understand your invention and will invest their time guiding you through the process.
If you have any questions whatsoever about what the patent application process, please feel free to book a complimentary appointment with us below: