Australian Procedure

 

The first step in obtaining a patent in Australia frequently involves filing a provisional specification at the Patent Office. The provisional specification is a written description of the invention, and filing it establishes a "priority" date for the invention described. The priority date is the date at which the newness of the invention will be assessed. The filed application will have priority over later-filed applications or published documents, and any patent eventually granted will not be damaged by them. After the provisional has been filed the invention described may be freely used. However, the specification is kept secret by the Patent Office, and the only information published by the Patent Office at this stage is the title, the applicant's name, the application date and the provisional number.

 

Within one year of filing the provisional a complete specification must be filed in order to maintain the priority date. The complete specification is based on the provisional specification but includes details of any modifications, developments and improvements to the invention. The complete specification includes a set of "claims" defining the scope of the protection sought for the invention. The monopoly granted under the patent will be determined by the wording of the claims. Once a complete specification has been filed no new matter may be added to the specification.

 

A patent application number is allotted by the Patent Office at this stage, and full details of the provisional and the complete specifications will be published by the Patent Office 18 months after the priority date. Damages may be assessed retrospectively to the date of publication in any successful infringement action which is brought after the patent is granted.

 

The Patent Office usually directs examination to be requested about one year after the complete specification is filed. During examination a patent examiner will conduct a brief search for earlier published documents to establish whether or not the invention is new. An official report is then issued containing details of the search and any other objections raised by the examiner. Provided the invention is new the objections can usually be readily overcome by proposing amendments to the specification or presenting counter-arguments, or both.

 

Once the objections have been overcome, the application is accepted. Acceptance is advertised to allow interested third parties to oppose the application. If there is no opposition, or an opposition is unsuccessful, the patent is sealed and a deed of letters patent issues a few months later. The application becomes a patent at sealing.

 

The maximum duration of a patent is 20 years from the filing date of the complete specification. Renewal fees for maintaining the application and patent in force must be paid every year starting from the fifth anniversary of the filing of the complete specification. If you instruct us to prepare and file a patent application for you, we will send you timely reminders at every stage of the procedure outlined above, together with our commentary and; if appropriate, our recommendations.