Patents

A patent gives its owner a legal right to exclude others from making, using and selling their invention in a given country or region for a limited period of time, in exchange for publicly sharing their knowledge about the invention.

The patent right is based on a patent specification that describes the invention and includes a set of claims that defines the scope of monopoly protection being sought. The claims are a series of statements setting out the minimum features or steps of the invention in a clear and concise manner. Your Madderns patent attorney has the combined legal and technical skills to both understand your technology in depth and based on this understanding then define your invention in a manner that broadly captures the essential features of your invention.

Importantly, the claimed invention must be new at the time of filing – therefore any earlier publication or public use (including commercial use) of the invention prior to filing will normally prevent valid patent protection. There are limited exceptions to the above general rule so if you have publicised your invention in any manner then please seek immediate advice from one of our patent attorneys.

Sometime after filing a patent application, it will be examined by a Patent Examiner and, in most cases, one or more reports will issue raising objections. Each report must be dealt with for the application to be accepted and the patent granted. Dealing with these examination reports is one of the important roles of your patent attorney (along with drafting of the patent specification). Your patent attorney’s task is to ensure that the scope of monopoly protection of your patent is not overly narrowed by the examination process.

It is important to remember that a patent does not guarantee commercial success; a great amount of work is needed to take an idea from concept to the marketplace. Inadequate attention to effective business planning can lead to commercial failure of the invention, regardless of the strength of the patent.

A patent gives its owner a legal right to exclude others from making, using and selling their invention in a given country or region for a limited period of time , in exchange for publicly sharing their knowledge about the invention.

The patent right is based on a patent specification that describes the invention and includes a set of claims that defines the scope of monopoly protection being sought. The claims are a series of statements setting out the minimum features or steps of the invention in a clear and concise manner. Your Madderns patent attorney has the combined legal and technical skills to both understand your technology in depth and based on this understanding then define your invention in a manner that broadly captures the essential features of your invention.

Importantly, the claimed invention must be new at the time of filing – therefore any earlier publication or public use (including commercial use) of the invention prior to filing will normally prevent valid patent protection. There are limited exceptions to the above general rule so if you have publicised your invention in any manner then please seek immediate advice from one of our patent attorneys.

Sometime after filing a patent application, it will be examined by a Patent Examiner and, in most cases, one or more reports will issue raising objections. Each report must be dealt with for the application to be accepted and the patent granted. Dealing with these examination reports is one of the important roles of your patent attorney (along with drafting of the patent specification). Your patent attorney’s task is to ensure that the scope of monopoly protection of your patent is not overly narrowed by the examination process.

It is important to remember that a patent does not guarantee commercial success; a great amount of work is needed to take an idea from concept to the marketplace. Inadequate attention to effective business planning can lead to commercial failure of the invention, regardless of the strength of the patent.

The Australian innovation patent is designed for lower level inventions not necessarily meeting the inventiveness requirement of a standard patent.

Instead, an invention which is the subject of an innovation patent, must involve at least an innovative step rather than the inventive step of a standard patent.

As a consequence, innovation patents while providing all the rights of a standard patent, have a reduced maximum term of 8 years as compared to the 20 years of a standard patent.

Examination of an innovation patent is potentially a two stage process with an innovation patent application being automatically granted after a formalities check. A granted innovation patent may then be certified after a substantive examination process involving an assessment against previously published information or public uses.

Certification of a granted innovation patent is a requirement prior to taking any Court action in Australia seeking to enforce the rights of an innovation patent.

As of 26 August 2021, it is no longer possible to apply for new Australian innovation patents. What does this mean?

  • Existing innovation patents and innovation patents filed on or before 25 August 2021 will continue in force until they expire.
  • It will still be possible to file divisional innovation patent applications after 25 August 2021, provided that the parent application for the divisional was filed on or before 25 August 2021.
  • It will still be possible to convert a standard patent application to an innovation patent application provided the standard patent application was filed on or before 25 August 2021.

The Australian innovation patent is designed for lower level inventions not necessarily meeting the inventiveness requirement of a standard patent.

Instead, an invention which is the subject of an innovation patent, must involve at least an innovative step rather than the inventive step of a standard patent.

As a consequence, innovation patents while providing all the rights of a standard patent, have a reduced maximum term of 8 years as compared to the 20 years of a standard patent.

Examination of an innovation patent is potentially a two stage process with an innovation patent application being automatically granted after a formalities check. A granted innovation patent may then be certified after a substantive examination process involving an assessment against previously published information or public uses.

Certification of a granted innovation patent is a requirement prior to taking any Court action in Australia seeking to enforce the rights of an innovation patent.

As of 26 August 2021, it is no longer possible to apply for new Australian innovation patents. What does this mean?

  • Existing innovation patents and innovation patents filed on or before 25 August 2021 will continue in force until they expire.
  • It will still be possible to file divisional innovation patent applications after 25 August 2021, provided that the parent application for the divisional was filed on or before 25 August 2021.
  • It will still be possible to convert a standard patent application to an innovation patent application provided the standard patent application was filed on or before 25 August 2021.
  • Developing a patent protection strategy tailored to your requirements
  • Advising on the patentability of your invention including conducting searches
  • Preparing patent specifications and associated drawings in a broad range of technologies ranging from life sciences to electronics and communications (see our technology teams)
  • Filing of patent applications and prosecuting these applications through to grant
  • Obtaining overseas patent protection
  • Competitor monitoring and oppositions
  • Infringement and validity advice
  • Patent portfolio management
  • Litigation support in relation to Court proceedings involving patent enforcement and challenges to patent validity
  • Developing a patent protection strategy tailored to your requirements
  • Advising on the patentability of your invention including conducting searches
  • Preparing patent specifications and associated drawings in a broad range of technologies ranging from life sciences to electronics and communications (see our technology teams)
  • Filing of patent applications and prosecuting these applications through to grant
  • Obtaining overseas patent protection
  • Competitor monitoring and oppositions
  • Infringement and validity advice
  • Patent portfolio management
  • Litigation support in relation to Court proceedings involving patent enforcement and challenges to patent validity

Minimum Filing Requirements

Australian Patents

Convention and Non-Convention

  • Specification and claims in English
  • Drawings, if appropriate
  • Details of applicant(s) and inventor(s)
  • Details of entitlement from inventor(s)
  • Details of priority patent application filing, if any

PCT – National Phase

  • Particulars of PCT application, such as PCT and WIPO application numbers and applicant(s)
  • English translation of the International PCT specification if necessary
  • Details of entitlement from inventor(s)

Note: No signed documents are required from the applicant(s) or inventor(s).

New Zealand Patents

Convention and Non-Convention

  • Specification, abstract and claims in English 
  • Drawings, if appropriate
  • Details of applicant(s) and inventor(s)
  • Details of entitlement from inventor(s) 
  • Details of priority patent application filing, if any

PCT – National Phase

  • Particulars of PCT application, such as PCT and WIPO application numbers and applicant(s)
  • Abstract in English 
  • Verified English translation of the International PCT specification if necessary
  • Details of entitlement from inventor(s)