Patenting your invention
A patent is an exclusive legal right granted for an invention. If your invention is patented, others can’t make, sell, use or import your invention without your permission. This exclusive control over your invention can help you dominate a market and attract investors, and provides leverage in commercial negotiations.
Patents protect new and functional products and processes, often ones which solve technical problems. As part of getting a patent, how the invention works must be disclosed to the public in a patent application.
A patent owner may sell their patent, or license it patent to third parties in accordance with certain terms and conditions (e.g. in return for a licensing fee or royalties). Once a patent expires, exclusive control over the invention ends, and the invention is freely available to the public to commercially exploit without infringing the patent.
Patents can be granted for inventions in any field of technology, from everyday kitchen utensils and agricultural machinery to bionic ears and polymer bank notes.
An invention can be a product, system, method or process. Many products actually make use of a range of inventions. For example, a smartphone can utilise hundreds of different patented inventions.
Patent protection typically lasts for a maximum of 20 years from the filing date of the first standard patent application.
Renewal fees need to be paid to Patent Offices to keep a patent in force, otherwise they will lapse.
There is no such thing as an “international patent” or a “world patent”.
Patent rights are territorial and thus you must apply for patent protection in each country of interest. For example, your Australian patent won’t protect your invention in the US.
As such, to protect your invention in multiple countries, you would need to file a national patent application with the national patent office of each country of interest.
That said, in some regions, a regional patent office (e.g. the European Patent Office and the African Regional Intellectual Property Organization ARIPO) may accept regional patent applications and grant patents. You could thus obtain a regional patent from a regional patent office, and that patent would be valid in some or all of its member states.
If you are seeking patent protection in multiple countries around the world, a cost-effective option is to file an international patent application under the Patent Cooperation Treaty (PCT).
A PCT application can be based on an Australian provisional patent application, and has the effect of a national patent application filed in over 150 countries states around the world.
Applying for patent protection
Many requirements must be met before a patent can be granted. Some key requirements include the following:
- The invention must be novel. In other words, it must be new over what is already known in the public domain.
- To obtain a standard patent (which has a maximum term of 20 years), the invention must involve an “inventive step”. Essentially, the invention should not be something that a person of ordinary skill in the relevant technical field would have come up with as a matter of routine.
- To obtain an innovation patent (which has a maximum term of eight years), the invention must involve an “innovative step”. This is a lower inventiveness threshold which is often satisfied if the invention is novel.
- The invention must be disclosed in a patent application in a detailed and clear enough manner such that a person of ordinary skill in the relevant technical field can replicate the invention.
- The technical subject matter to which the invention relates must be “patentable” under law. Different countries draw different lines around what technologies are and are not patentable. For example, scientific theories, discoveries of natural substances, methods for medical treatment (as opposed to medical products) and computer programs are not patentable in many countries.
Your patent attorney can conduct a novelty search, which involves reviewing patent records and other databases to determine whether your invention (or something like it) is already in the public domain.
Another cost-effective and reliable method of finding out whether your invention is new involves first filing a provisional patent application with the Australian Patent Office, and then requesting they conduct an International-Type Search on your application. The results of this search can be very informative in terms of helping you decide whether to commit more to patent protection and commercializing your invention.
The most challenging part of filing a patent application involves preparation of the patent specification.
A well-drafted patent specification should describe your invention in a manner which is both sufficiently detailed and general so that your scope of protection is broad and covers not just the ideal version of your invention, but also any modifications your competitors might make.
Here’s an example of a patent specification that was filed as part of a PCT application.
Patent specifications must describe the relevant technical field and provide a background and description of the invention that is detailed enough for the relevant skilled person to put the invention into practice.
Patent applications typically include black and white line drawings and diagrams which help with explaining and describing the invention.
Finally, the patent application must include the all-important claims. The claims are carefully crafted statements which define the scope of your protection and the monopoly being sought.
Depending on the country you are seeking patent protection in, you may also need to submit various kinds of statements, declarations and supporting documents.
Given the complexity involved with preparing and filing a patent application, intellectual property bodies such as the World Intellectual Property Organization (WIPO) and IP Australia recommends engaging a patent attorney to prepare your patent application and greatly improve your chances of obtaining a granted patent.
Patent costs vary considerably between countries (and even within a country).
The cost of patenting an invention depends on factors such as:
- the nature and complexity of the invention
- patent attorney fees
- official fees charged by national patent offices
- the length of the patent specification
- the number of claims in the patent specification
- possible costs associated with translating your patent specification
- whether or not objections are raised during examination of your patent application and how difficult those objections are to overcome
Your patent attorney can give you a cost estimate after learning about your invention and the countries you wish to secure patent protection in.
In Australia, the patent application process often starts with filing a provisional patent application, and fees of $4,000 to $6,000 are quite typical.
Possibly. The laws and practices concerning computer-implemented inventions vary between countries. There are many examples of software inventions that are patentable in one country but not another.
To make things even less predictable, the relevant laws and practices can change quite drastically over a period of several years; it is thus possible that an invention is not patentable when the patent application is filed, but the invention becomes patentable by the time the patent application is examined years later.
The patentability of software-based inventions is an area of law that is constantly changing. As such, you should seek specific advice from patent attorneys familiar with this area of law in each country where patent protection is of interest to you.
There are many advantages to filing a provisional patent application, including:
it establishes your earliest filing date, which is important for determining whether your invention is patentable (the earlier your filing date the better)
the details of your invention are not published so competitors won’t be able to find out out what you’re working on
the Australian Patent Office can conduct an International-Type Search on your application to assess the patentability of your invention
future patent applications, including PCT and national patent applications can be based on your provisional patent application and share the same early filing date.
In short, there are plenty of reasons to start the patent application process by filing a provisional patent application. Your patent attorney can help you work out the next steps as your invention matures and becomes market-ready.
Design registrations typically protect how a product looks, rather than how it works. That said, if the function of your product is intrinsically tied to its appearance, then you should consider both patent and design protection.
Patents from a business perspective
Patents allow you to stop others from commercially exploiting your invention for up to twenty years. From a business perspective, this is a long time to be keeping competitors at bay while you carve out your market niche. The powerful monopoly afforded by patents allows you to dominate a market by restraining your competitors.
Patent rights in Google’s search algorithms and Dyson’s cyclonic vacuum technologies propelled these companies to the forefront of their fields, leaving competitors languishing.
Return on investments
Having spent time and money commercialising an innovative product, the last thing you want is for your investments to be eroded by copycats. By limiting competitive activity for up to 20 years, patents allow you to protect your initial investment and secure higher returns as you establish a dominant reputation in the marketplace.
Shrewd business partners, investors and shareholders recognise the value of having pending or granted monopoly patent rights. This is often useful for securing funding, attracting business partners and throttling your company’s market value.
You can market your product as patent pending or patent granted; these labels not only give your consumers a positive image about the specialisation of your product, they also act as warning signs to competitors and helps deter them from copying your invention in the first place.
Licensing and royalties
You can license your invention to third parties if you choose not to exploit the patent yourself. For example, rather than set up supply chains, manufacturing, distribution etc. you could simply sell or license your patent to an established company, perhaps one that already has the commercialisation pipelines in place, in which case you can negotiate licensing fees and/or royalty payments.
If your invention is profitable, others will want to cash in. Without patent protection, competing businesses can commercialise your invention without your permission. Indeed, we receive many enquiries from savvy businesses wanting us to conduct freedom-to-operate patent checks before they proceed with mass-producing an existing product.
Larger operations can leverage economies of scale and produce your product at more competitive prices, thereby reducing your market share. Even smaller competitors can produce the same product at lower prices, often because they did not have to spend the original time and resources involved in researching and developing the product in the first place.
Every situation is unique and there is no “best way” to go about licensing your patent.
Generally speaking, if you want to license your patent, do your due diligence. Before negotiating with potential licensees, ensure you are familiar with the current and future prospects of your invention and the relevant market(s).
You should also have a thorough understanding of the commercial state of potential licensees, the value they can add, and the estimated value of your patent. Reflect on your business objectives and ensure that your licensing agreements align with your short and long-term business goals.
Patents are legal instruments designed to encourage innovative activity. Patents provide innovators with a time-limited monopoly to profit from their invention; in return, those inventions must be disclosed to the public such that when the patents inevitably expire, the public is able to make use of and build upon the inventive knowledge.
In this way, patents are an instrument which balance the protection and promotion of innovative activity with the dissemination of technological knowledge and advancements to the general public. As such, to obtain patent protection, it is mandatory that the invention is disclosed to the public. This is typically done by describing how the invention works in the patent specification of a patent application. Indeed, if the invention is not adequately disclosed such that the relevant skilled person can implement the invention, then the patent would not be valid.
To obtain patent protection, an invention must be new compared with everything in the public domain before patent protection is applied for.
Public disclosures of your invention before filing for patent protection can be used to argue that your invention was not new at the time of filing for patent protection.
As such, until you have filed a patent application, avoid discussing your invention with others, sharing it on social media, or otherwise publicly disclosing your invention.
Speak with a patent attorney as soon as possible.
Countries such as Australia and the US have grace periods which can protect you against public disclosures made before filing a patent application, but time is often of the essence and action should be taken sooner rather than later to file any relevant patent applications.
Much like the relationship between lawyers and clients, there exists a legal privilege between patent attorneys and their clients.
Moreover, Australian patent attorneys are bound by strict confidentiality obligations under Section 18 of the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018, so rest assured that your confidential information will remain exactly that – confidential.