Patent Application Options

Provisional Application

A Provisional Patent application establishes a potential prior right (“patent pending”) to an invention which may still be at an early concept stage and is perhaps not a fully developed idea with as yet no real indication of likely commercial success. It establishes for the inventor a priority date, that is, the date subsequent to which no other person can receive a valid patent for that invention, should the Provisional application lead eventually to a granted patent. There must have been no public disclosure of the invention prior to the application.

The Provisional Patent application remains confidential, does not of itself lead to an enforceable patent and has a maximum life of 12 months. To continue towards a granted patent, the inventor or applicant must lodge a Complete Standard Patent application, an Innovation Patent application, or a PCT application before the elapse of the 12 month life of the Provisional Patent application.

General requirements:

• Details of the applicant(s)
• Title of the invention

The specification must:

• Must describe the invention in a manner which is clear enough and complete enough for the invention to be performed, that is, put into practice by a relevantly skilled person.
• Will usually include one or more drawings illustrating the invention and may include one or more claims.

Innovation Patent Application

The Innovation Patent was introduced into the Australian system to provide a shorter term (8 years) of patent protection for more minor inventions having a lower level of inventiveness, and to provide the applicant with a granted patent in a relatively short time.

The Innovation Patent as first issued to an applicant is only an acknowledgement that the application and the filed specification meet the minimum formality requirements; it is not enforceable. For the Innovation Patent to become enforceable, the optional step of requesting examination must be made, and the patent first be examined and, if meeting the criteria of novelty and innovative step, Certified.

An Innovation Patent application may be an appropriate choice if it is desired to alert third parties to the invention, since publication follows within only weeks from the filling date if the formality requirements are satisfied. It also provides a 12 month grace period if there has been disclosure in that period prior to filing the application.

Note: Because an Innovation Patent cannot serve as a priority document for filing a Standard Patent application should a longer period of patent protection become desirable, Wallington-Dummer files a parallel Provisional Patent application with the filing of the Innovation Patent application.

General requirements:

• Title of the Invention
• Details of the patent applicants
• Name of the actual inventor(s)
• Details of any priority claims

The specification must:

• Must describe the invention fully so that the description enables a person relevantly skilled to put the invention into practice
• Must state the best method known to you of carrying out your invention
• Must include at least one claim up to a maximum of 5 claims that define the invention
• Will usually include one or more drawings illustrating the invention.

Standard Patent Application

A Standard Patent application is an application for an Australian Standard Patent which, if granted, has a life of 20 years from the date of filing the complete application. The specification becomes open to public inspection at around 18 months from its filing date (or from the Provisional filing date if based on a Provisional application) and will become subject to examination by IP Australia. The specification for a Complete Standard Patent application, if based on a Provisional application, may include any further developments of the invention which may have arisen since the filing of the Provisional Patent application.

A Standard Patent application, as a first filing, is appropriate if the invention is well developed conceptually, shows at least a promise of being commercially viable, or if it is desired to obtain a Standard Patent as early as possible. Also appropriate if there has been disclosure of the invention by the inventor in a period not longer than 12 months prior to filing the application, since the inventor is protected from such disclosure by a 12 months grace period.

General requirements:

• Details of the applicant(s)
• Name of the actual inventor(s)
• Related application numbers and application dates if you are entitled to claim priority
• Deposit number(s), deposit date(s) and institution(s) concerned if the application relates to a Micro-organism

The specification must:

• Must describe the invention fully so that the description enables a person relevantly skilled to put the invention into practice
• Must include the best method known to you of carrying out your invention
• Must include at least one claim that defines the invention
• Will usually include one or more drawings illustrating the invention.