02 9188 9689

The Patent Application Process

This guide takes a look at the patent application process right from the initial filing through to patent protection in each country of interest. This is a practical guide as to the things you should do and your options during the patent application process.

Firstly, let’s take a look at the patent process flowchart which will give us some guidance as to where we are going:

The patent Process

Patent Application Process

The patent application process right from the initial filing through to patent protection in each country of interest

The Provisional patent

Firstly, let’s clarify one misconception, there is no such thing as an international patent – you would need to obtain a patent in each country in which you wished to enforce your rights.

However, right at the outset, you wouldn’t necessarily want to start filing patents in each country of interest because you don’t know what the market will think of your idea and you may wish to make improvements to your invention, especially as new commercialisation opportunities become available to you.

Luckily however you can take advantage of the international patent application which is a single application which reserves you rights internationally and gives you an initial international patent pending period during which you can commercialise your idea, such as by bringing your idea to market and the like without jeopardising your rights in the idea.

The international patent pending period generally starts with the filing of a provisional patent application. The provisional patent application is generally the best way to start the process of obtaining an international filing date because it has advantages in not been published for your competitors to see, allowing you to make improvements to the idea and more.

The provisional patent application gives you an initial 12 months of international patent pending. It is very important that your provisional patent application is thoroughly prepared because, essentially, you will have to rely on the disclosure within your initial filing throughout the 20 year life of your patent.

Commercialise

Having filed your provisional patent application, you are able to begin the commercialisation of your invention right away. The reason you would do this is so as to be able to make an informed decision at the end of the provisional period as to whether to continue with the patent process or not, which countries would be of interest and the like.

Prior Art Search

During the provisional international patent pending period there is an opportunity to perform a prior art search to determine which aspects of your idea are new.

Why isn’t this search performed prior to filing? The reason is that, generally, one always obtains patent protection for those aspects of your idea that new. In other words, you only need one feature of difference to what has been done before, if that feature or difference is new not obvious in order to be granted a patent. The strategy is to file a very thorough patent application, such that during examination of your patent application, we can choose from any of the features or aspects of your idea in order to distinguish your idea from what has been done before.

One good way of performing the prior art search is to request the international type search. The international type search is a search performed by the international search and authority and is the same as the search that will be conducted during the next PCT stage (discussed below). A request in the international type search we are essentially bringing forward the PCT search so that when we subsequently filed PCT patent application, the search won’t be performed again. In this way, we know what we will be facing during the subsequent PCT stage so that we can appropriately amended the patent specification to focus on those aspects of the invention on you so that the patent application proceeds through the PCT application without a problem.

PCT international application

At the end of the provisional period, assuming the commercialisation of your idea has gone well, we recommend proceeding with the PCT patent application.

The advantages provided by the PCT patent application that it essentially provides you with a further 18 months of international patent pending before you have to choose your countries of interest (described below). In this way, you have more time to develop more commercial opportunities in more countries around the world before having to make a decision.

Furthermore, the PCT patent application provides a centralised examination of your patent so that if we address any issues of the examiner during the PCT examination, the examiner’s in each country down the track will be persuaded to accept your application. In this way, we avoid having to argue with examiners on several fronts.

As discussed above, during the PCT stage there is a prior art search. The search won’t be performed again if we have already requested it by way of the international type search during the provisional stage.

The PCT examiner will also issue a written opinion providing an opinion as to the novelty and inventive step of each aspect of the idea. If we disagree with any of the examiner’s findings and wish to obtain a clear written opinion, we can request optional examination so as to put forward arguments to the examiner.

National phase applications

At the end of the PCT international application stage, one chooses which countries would be of interest, this being what we call the entries into the national phases. This process generally happens at 30 or 31 months from the initial filing date by which time you should have a good idea as to the commercial merit of your idea so that you can make an informed decision as to which countries would be appropriate.

When choosing countries, one can select dominant consumer markets such as the US, dominant producer markets such as China, India and Pakistan, markets with a large population such as Indonesia or your own backyard, Australia.

It is also possible to obtain patent protection throughout the European region by utilising the European patent application.

In summary, if you have a great idea which you believe has commercial merit, it is vital that you discuss with us strategies to protect your idea before it becomes too late. As you can see from the above, it is vital that the initial application be prepared properly and that, during the patent application process, we take advantage of all of the options available to you to give you the broadest scope of protection.