PATENTS!Intellectual Property in Detail!!!VDIS10025 Intellectual Property and Design !

All of the latest Australian and International Intellectual Property information and application processes can be found on the IP Australia online portal at www.ipaustralia.gov.au !!PATENTS - A Patent is a monopoly granted by a Government for a limited period in return for the development and disclosure by an inventor of a new invention. The patent takes the form of an exclusive right to prevent other persons using the invention. !!Australian patents can prevent the manufacture of a patented article in Australia, the sale of that article within Australia, the export of that article from Australia, and the importation of that article into Australia following its manufacture abroad.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

An invention must be new (novel) at the time of lodging the application for a patent registration. For example, products which have already been sold and methods which have been used commercially in Australia, before the date of application for the patent (known as “published”), cannot be validly protected by a patent.!!Virtually any new technical advance can be patented and it is not necessary that the advance be a major breakthrough; quite a small improvement or variation which is an invention will suffice. !!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

Any product eg: manufactured goods, electric circuits, chemical compounds, assays, microorganisms and plants which can be sold can be patented if new and inventive. Similarly, processes of manufacturing and new methods of using them, can all be patented. Genetically altered lifeforms can also be patented. !!The main areas of difficulty are business schemes, plans, computer programs, software and related Information Technology advances. Generally speaking the industrial applications of computers and algorithms are patentable in Australia but the program listings and the algorithms themselves are not. !

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

Since the law determining, what can be patented is also based upon a historical sequence of court decisions, (common law) what can be successfully patented has changed over the years and varies from country to country, eg. algorithms may be patentable in the United States but not in Australia. It is certainly worth discussing any advance or inventions with patent attorneys as at least some aspect or aspects of an invention may well be patentable, if not in Australia, then possibly elsewhere. !!It is also worthy of noting that IP laws are changing constantly so regular updates of what can be patented is good practice.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

AUSTRALIAN PATENT APPLICATION PROCEDURE!!The usual first step is the lodgement of an application accompanied by a provisional specification to ipaustralia.gov.au The provisional specification describes the invention and its date of lodgement determines the "priority date" on which date the invention must be new. Within 12 months of lodging the provisional specification a complete specification must be lodged at the Patent Office if the application is to be continued. !

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

Where an invention is in development when a provisional specification is lodged, further provisional specifications can be lodged in the 12 month period and all combined in a single complete specification. !!The complete specification concludes with a series of numbered paragraphs termed claims, which define the monopoly in words. The claims include not only the particular arrangement described in detail in the specification, but also variations of that arrangement which define the inventive concept. !

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

It is necessary to request examination, and the Patent Office then has an examiner conduct a search to determine whether the invention was known before the priority date. The examiner, in a report, may well refer to earlier published patent specifications which fall within the claims. !!It is then necessary to amend the claims so as to remove that part which was previously known to arrive at the largest possible scope of protection to which the applicant is entitled. The application is then accepted. !

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

There is an opposition procedure which is used for only a small percentage of cases, but enables third parties to bring to the attention of the Patent Office publications which were known in Australia or elsewhere before the priority date. !!Once the patent has been granted, infringement is determined by considering whether the product or method of the competitor falls within the claims of the patent. The onus is on the patentee to commence infringement proceedings in court in appropriate circumstances. !

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

In order to keep the application pending, and the eventual granted patent in force, it is necessary to pay an annual fee, termed an annuity, to the Patent Office on the anniversary of the lodgement of the complete specification, every year other than the first and second anniversaries. !!Patent terms in Australia are 8 years for an Innovation Patent, 20 years for a normal patent and 25 years for pharmaceuticals, all from the date on which the complete specification was lodged.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

OBTAINING FOREIGN PATENTS!!Most countries in the world have a patent system. Most countries, like Australia, are members of International Conventions. A single international application can be filed under the PATENT CO-OPERATION TREATY (PCT). The PCT is administered by the World Intellectual Property Organisation (WIPO). Foreign applications are entitled to the priority of the Australian filing date. !!Usually a provisional specification has been lodged in Australia and when the complete specification is lodged in Australia, the complete specification is also lodged at the same time at the foreign patent office of each country or region where protection is desired. !!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

!Each foreign application is separately examined by the appropriate foreign patent office. Usually an examiner's report from each country must be considered and the objections overcome before the individual foreign patents can be granted.!!Some South East Asian countries, such as Thailand, are favourably influenced by the grant of a corresponding Australian patent. Most countries require the payment of annuities to maintain granted patents in force.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

PATENT CO-OPERATION TREATY (PCT)!!Australia is a member country of the PCT. This treaty permits an international application to be lodged with the Australian Patent Office designating Australia (if desired) and also those foreign countries which are members of the PCT and in which patent applications are ultimately intended to be filed. Usually the international application is filed within 12 months of lodging a provisional specification. !

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

The use of the PCT permits the fees for each of the designated countries to be delayed by up to 8 months from the 12-month deadline under the Paris Convention. !!Use of the PCT procedure also means that the results of an international search to determine the newness of invention are available before the deadline for paying the fees in the designated countries. Most industrialised countries are members of the PCT. !!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

EUROPEAN PATENT OFFICE!!As a result of the European Patent Convention it is possible to lodge a single European parent application in order to obtain protection in any, or all, of the European countries. Because the European patent application can be lodged with an English language specification, the cost of preparing translations, can be deferred until the European application has been accepted. After grant, in order to maintain protection in each country, it is necessary to pay annuities in each European country.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

INNOVATION PATENT AND PETTY PATENTS!!Petty Patents were short-term Australian patents which were available for a special range of inventions that are subject to the less rigorous conditions regarding inventive level than standard patents. The main advantage of a petty patent was that of quick protection.!!The term “Petty Patent” is no longer used anywhere in the world, its use in Australia having been superseded by the term “Innovation Patent” in 2001.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

Recently, however, the term Innovation Patent has acquired a secondary meaning, namely any type of protection that is provided for inventions that do not qualify for full patent protection. Other terms such as utility innovations, utility solutions and short term patents are used in some countries.!!The new Innovation Patent is intended to be more useful for small enterprises in that the standard of inventiveness required is lower than that required for ordinary patents. What is required is an innovation that makes a “substantial contribution to the art” – and there is no need for it to be non-obvious.!

Patents Intellectual Property in Detail VDIS10025 Intellectual Property and Design

PATENTS – Intellectual Property in Detail!