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This article has been written by Shalini Singh, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction 

The patent basically grants the inventor exclusive commercial rights or a monopoly over his or her invention. It is a right that can be legally enforced for any process, method, or device. In order to get an invention patented, there is a process that needs to be followed and the invention is patented at the end of the whole process. The inventor starts by filing an application and then a procedure is followed. The advantage of a patent provides protection to the invention. The protection provided by the Australian patent system contributes and encourages new inventions. The following article covers the whole process in detail and explains the different stages of a patent application, examination process, and then finally the appeal system in Australia and the related provisions. 

A brief overview of the Australian standard patent process

The patent process begins with the filing of the application, up until the grant of the application, a standard patent will provide 20 years of protection for your invention. Typically, one begins with filing which is called a provisional patent application. A provisional patent application establishes a priority date for the invention and is typically suitable if the invention is not in a commercial ready form or if there is a scope that there may still be modifications or improvements which the applicant would like to implement after filing the provisional application will give the applicant 12 months pending patent protection before the application will lapse to maintain priority date the applicant will need to file a complete patent application. 

The filing date of a complete application officially starts the 20-year term of protection of the patent. The complete application is typically a more comprehensive version of the provisional application which includes only provisional specifications. Whereas the comprehensive application includes further technical detail or information about any modifications or improvements that might have been implemented to the invention since filing the provisional application. Once the complete application is filed no further information can be incorporated into the patent specification. 18 months after the filed application or the provisional patent application it is published and made available for viewing by anyone on IP Australia’s online database. 

After this stage, the waiting period starts which is typically between one to three years in duration where the application is in a queue at IP Australia waiting to be examined. The following are the different sections that are required to be placed in the application in the set order and each section is required to start from a new page in the application:

  1. Patent request: It is a form for the request which is approved by the Commissioner of Patents. The information mentioned in the form is needed to be provided by the applicant;
  2. Description: It includes a detailed description of the invention which includes, the title of the invention, technical field, background art, summary of the invention, etc;
  3. Claim/s: These are basically the points that define the specifics of the inventions. It may even include chemical or mathematical formulae and/or tables where necessary.
  4. Abstract: Includes a brief overview of the invention;
  5. Drawing/s (if applicable);
  6. Sequence listing (if applicable);
  7. Priority application details (if applicable); and
  8. A filing fee of A$370 (standard patent application) or A$180 (innovation patent application).

Examination process

After the above procedure, the patent office eventually issues a direction to the applicant to request examination on his/her application. It is not required to wait for the formal direction to request examination to be issued by the patent office; an applicant can request examination early or even request expedited examination if that is in line with their commercial objectives.

Provisional application

An applicant can also request for the examination of their patent registration application at any time. The request for examination needs to be made within 5 years of filing an application. It is advisable to request an examination after four years if a request for examination hasn’t been made. The applicant must request for the examination within a period of 2 months of the date after the four years are over or within 5 years, whichever is sooner. The application will automatically lapse if there is an absence of a request for examination within the directed time duration. 

Payment of fee

The applicant needs to pay a fee after the applicant has completed and submitted a request for application. The examination is conducted within nearly 12 months after the request has been made by the applicant. IP Australia then issues an examination report on the application. From the date of issuance of this first examination report the applicant will have 12 months to put their application in order for acceptance.

Grounds for examining the patent application

An examination is a process whereby IP Australia the application to determine whether an invention is worthy of receiving patent protection. The two main criteria that the examiner assesses an application on are known as 

  1. Novelty and, 
  2. Inventive step.

To satisfy a novelty it is required that the invention is new or has a new feature that is not previously seen anywhere in the world. The examiner then conducts a search in respect to the pattern, literature, and any other published material, which existed before the priority date which is the date when an application is filed for the first time. In contrast to novelty, inventive steps are a more subjective test. To satisfy this and prove that an invention has an inventive step, the invention has to be unique and cannot be considered obvious to a person skilled in the technical field of the said invention. 

Issuance of the examination report

After the examination is done, an examination report is issued. It is the stage where the applicant has the opportunity to make changes or amend the application to overcome the objections in the report issued. These objections can simply be resolved by modifying or editing the descriptions or claims. In response to the changes made, subsequent reports may be issued by the examiner till the time all the objections have been overcome. After overcoming all of the objections, the application is accepted. And if the objections have not been overcome within a period of 12 months, from the date when the First examination report was issued, then the application will automatically lapse. 

Expedited examination 

There are few instances under which an applicant can request for faster examination of their application. An expedited examination can be requested after the patent application has been filed. Under certain circumstances it is required for the applicant to get their patents registered faster for instance if the applicant is seeking to enforce their patent rights. A patent registration process takes almost over a year to get completed. This time period might be too lengthy for an applicant who requires a registration certificate for certain purposes. In such cases, the applicant can request for an expedited examination which accelerates the examination process and reduces the whole duration from over a year to a waiting time between 4-8 weeks. An application will only qualify for an expedited examination if the request has been made due to the following reasons:

  • If the patent belongs to the field of environment-friendly technology or green technology, 
  • Infringement proceedings, 
  • Licensing reasons, 
  • If the applicant belongs to a small-to-medium enterprise then they qualify to expedite their patent examination process. 

The fees for expediting examinations are the same as those of the normal examination process. An applicant can request expediting their patent application examination even if they have already filed their request for examination. Once a registered patent certificate is granted, the patent rights are enforceable from the publication date of the complete application

Re-examination 

There are times when the validity of a certified innovation patent (chapter 9A, Sec.101G of Patents Act 1990) is challenged and that is when a re-examination process is carried out where new evidence is evaluated by the examiner. Chapter 9 of the Patents Act 1990 provides for the re-examination of applications for standard patents and granted standard patents. A re-examination can be requested by a third party, the patent owner itself, or by a court. The grounds for re-examination can be on the basis of:

  • Novelty – whether the claimed invention is a new and original invention and a new feature that is not previously seen anywhere in the world. 
  • Inventive (innovative) step- if the claimed invention is not unique and cannot be considered obvious to a person skilled in the technical field of the said invention.
  • Manner of manufacture
  • Disclosure- if the patent right holder has not disclosed all the required details.
  • Clarity – if clarity in respect to the description of the invention and its function is not consistent.
  • Usefulness- if the invention actually has practical use etc. 

IP Australia may also decide to conduct a re-examination of a patent by itself if during an internal quality review, a new already existing art is found, in response to a withdrawn opposition or if materials have been filed by a third party that is questionable to the validity of a patent without requesting re-examination. A re-examination process can also be initiated by a Commissioner themselves. The patent holder has the opportunity to an adverse report by making amendments and/or submissions. If the adverse findings fail to be resolved, the Commissioner has full authority and power to refuse an application or even revoke a patent. In such a case the patent holder or the applicant has the choice to make an appeal to the federal court against the Commissioner’s decision.

Appeal system 

Australian IP system does not have an Appeal board such as the USPTO in the US or the EPO for European countries. In cases of objections raised by an examiner, the applicant may request for a hearing which is an oral hearing. The hearing is a proceeding that takes place before a delegate of the commissioner of patents who has the authority to hear submissions, consider the said amendments, and finally, make a decision to accept or refuse the application. 

In case of refusal of an application, the applicant has the option to appeal to the federal court which is a very rare occurrence as typically the subject matter in such appeals are usually related to computer-implemented inventions.  

Under Patents Act 1990, the procedure for an appeal is set by the Federal Court Rules that are tried at The Federal Court of Australia, and the state and territory supreme courts also have the jurisdiction to hear matters related to patent infringement. An appeal to the federal court is in the original jurisdiction of the court. The jurisdiction of the federal court is laid down under Section 154 of the Patents Act 1990. It states that:

(1) The Federal Court has jurisdiction with respect to matters arising under this Act.

(2) The jurisdiction of the Federal Court to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under Section 75 of the Constitution.

(3) A prosecution for an offence against this Act must not be started in the Federal Court.


Within 21 days from the date of the decision of the Commissioner, an appeal may be filed to the Federal Court. There are multiple ways under which the decisions of the Commissioner may be subject to judicial or administrative appeal or review. Under Section 224 of the Act and Regulation 22.26, review decisions may be appealed to the Administrative Appeals Tribunal (AAT). To appeal against the Commissioner’s decision, a notice of appeal must be filed within 21 days of the date of the decision. Under Rule 34.30, once the notice of appeal is served, within a duration of 14 days, the Commissioner is required to lodge all the required and necessary documents for the hearing of the appeal with the court. Moreover, each party to the appeal is also to be provided with a notice of all the documents which are filed by the Commissioner. 

After the notice of a list of all the documents filed by the commissioner is provided. All the evidence is then adduced before the court and the appeal must be decided upon these pieces of evidence. This whole process is in the nature of rehearing de novo. The court decided the matter and exercised its judicial power of the commonwealth from the point of view of the commissioner. A right of appeal is granted under the Patent Act from a decision of the Patent Office to the Federal Court. Following are the instances where an appeal can be made: 

  1. Sec. 100: a refusal to grant a patent; 
  2. Sec. 60: an opposition decision; 
  3. Sec.101 a decision to revoke after re-examination; and
  4. Sec. 104 and 109: refusal or grant of, or direction to make, an amendment

Conclusion

Australia has an open economy and the whole filing process is applicant-friendly as well. The fees for application are relatively low and that is what makes Australia a suitable patent filing country. The patent office of IP Australia, according to 2018 statistical reports of WIPO, ranks among the top 10 patent offices in the field of a number of patent applications filed. The examiners of the patent applications are also said to be supportive and helpful to the applicant which makes the entire process smooth for the applicant. Hence, due to such detailed and clear procedures and processes for patent filing, Australian Patent examination, and appeal system, it is easier to file and get an invention patented if all the necessary rules and procedures are followed and fulfilled by the applicant. 

References

  1. www.ip australia.gov.au, “Understanding Patents”
  2. www.uk.practicallaw.thomsonreuters.com, “Patent Litigation in Australia: Overview” 
  3. www.researchgate.net, “An Empirical Investigation into Patent Enforcement in Australian Courts”
  4. www.mondaq.com, “Intellectual Property: Australia”
  5. www.wipo.intl, “WIPO Patent Drafting Manual”

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