Provisional applications establish a priority date, that is the date at which the invention is judged for its newness and inventiveness. Provisional applications last one year and then lapse.
Complete Patent Applications
Complete applications are examined by the Australian Patent Office and granted for a term of up to 20 years. The grant process usually takes two to three years during which the application is "applied for" or pending. Complete applications are often filed following a provisional application and when this occurs the priority date established by the provisional application is preserved in the complete application.
More than one provisional application may be combined into a single complete application, and in this case the application is referred to as "cognate".
Patents of Addition
Patents of Addition may be filed in Australia for minor improvements over and above an existing patent. Patents of Addition do not have to be inventive over and above the earlier patent, and it is not necessary to pay renewal fees as long as the earlier patent is kept in force.
The Innovation Patent has replaced the Petty Patent system. An Innovation Patent is like a complete patent, but is not examined but granted within a very short period of time, usually a few months. An Innovation Patent has a maximum term of 8 years and a reduced number of claims. These patents are useful where they protect a product with a market window of less than a year. Applications may be filed in other countries as well as in Australia. Where they are filed less than one year from the first filing in Australia they may claim the Australian priority date. Applications have to be filed in every country where patents are required.
The Patent Cooperation Treaty (PCT) allows an international application to be filed designating up to 80 countries, and this application lasts for 18 months. The main use of this application is to extend time until separate applications are made in each country for up to 30 months from the priority date. They are very popular where clients are unsure of the countries in which they will require protection or cannot afford to commence that protection regime at the end of the 12 month period provided by a Provisional Application.
Patent applications are only allowed to protect one invention. Where more than one invention is described and claimed in the patent application, during the examination process it will be necessary to delete all but one of the inventions. When this occurs, "divisional" applications may be filed to protect the inventions deleted from the parent application.
Rachel is a Partner of FB Rice and heads both the Medical Technology and China teams. As a qualified patent attorney, Rachel has over 18 years’ experience in preparing and prosecuting patent applications both in Australia and internationally. She conducts infringement and validity opinions and excels at providing high level strategic advice to a range of start-up companies.
Rachel is a registered Australian and New Zealand Patent Attorney.