7 steps to patent protection
A patent is a powerful legal right which gives you a monopoly over your invention for up to 20 years. In exchange, we simply need to describe how your invention works in a patent specification.
Click here to see an example of a patent specification.
A professionally-drafted patent specification maximises the scope of your protection and should cover not only your commercial product, but also variations of it so your market isn’t diluted by copycats.
So, how do we get from the invention in your head to a robust patent specification which leads to granted patents around the world? Read on to learn about the 7 steps to patent protection in Australia and overseas.
7 steps to patent protection in Australian and overseas:
- File a provisional patent application
- File an international PCT patent application
- File standard patent applications in each country of interest
- Have the applications examined
- Respond to any patentability objections
- Reach acceptance once objections are overcome
- Patents are granted if no oppositions are filed
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“)
- it’s relatively cheap: $4,000+
- you can start deterring competition by indicating your patent pending status
- it buys you pending patent protection around the world for 12 months while you fine-tune your invention and commercialisation strategy
- doesn’t get published for 18 months (so competitors can’t monitor your activities)
- the Australian Patent Office can conduct a search on your application to determine if your invention is patentable
- it is recognised in most international jurisdictions
Do not publicly disclose your invention until you have filed your provisional patent application.
Public disclosures, including ones made by you, can invalidate your patent protection later on.
Rest assured that patent attorneys are bound by client-attorney privilege and will regard 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 it before your provisional patent application expires
- Keeps your patent rights pending in major jurisdictions, including the US, the EU (including the UK), China, Canada, Japan, and South Korea.
- 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 worthwhile if investors, exclusive distributors etc. want to know your prospects for patent protection
- Some countries are not part of the PCT (Patent Cooperation Treaty). To protect your invention you will need to file standard patent applications directly into these countries. These include Argentina, Bangladesh, Taiwan and Venezuela.
Step 3 - File standard patent applications in each country of interest
At the 18-month mark, your PCT patent application matures and branches off into individual standard patent applications filed in each country where patent protection is important to your commercial strategy.
- Roughly $1,500 to $6000 per country
- Roughtly $10,000 for the EU (includes the UK)
- We work with a global network of trusted foreign patent attorneys to ensure your applications are filed in accordance with each country’s individual patent law requirements and quirks.
Step 4 - Have your patent applications examined
Remember how your invention needs to be at least novel to be patented? It’s at this examination stage when your invention is put to the test.
The national patent offices of each country you’ve filed in will search for information published before your invention’s priority date, trying to find reasons why your invention is not novel or inventive.
- You may request early examination of your patent applications if there are urgent 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 or PCT patent applications can be reliable indicators of how your standard applications will perform under examination
Step 5 - Respond to any patentability objections
It is common for patent offices to initially raise patentability objections. After all, they must ensure patents are being granted to truly new inventions and not for things that already exist.
A typical patent office objection sounds something like this:
- We’ve found some documents which were published before your invention’s priority date.
- These documents disclose your invention, or something similar to it.
- Because of these documents, we don’t think your invention is novel or inventive and thus it shouldn’t be granted a patent in our country.
- 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 overcome all patentability objections, no one has opposed your patent applications and now you’ve got 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