A patent is a type of intellectual property.
It is a legal right for an invention, which may be a device, substance, or method.
Registration of a patent provides legal protection which prevents other parties from using the patent.
Under the Patents Act 1990 (Cth) (the Act) the patentee has the right to “exploit” the patent, and to authorise another person to exploit it. The right can be assigned to another person or transferred under a will.
“Exploit”, in relation to a product, includes to:
- make, hire, sell or otherwise dispose of a product, or offer to do these things;
- use or import a product; and
- keep a product for any of the above purposes.
In relation to a method or process, it includes to use the method or process, or to do any of the above with a product resulting from the use of the method or process.
What exactly is a patent?
Under the Act, a patent may be either a standard patent or an innovation patent.
Standard patent
An invention is a “patentable invention” if it:
- is a manner of manufacture;
- is new;
- involves an inventive step;
- is useful; and
- has not been secretly used on behalf of, or with the authority of, the inventor before the patent application.
A standard patent lasts for up to 20 years from the date the application is filed.
Innovation patent
An innovation patent lasts up to eight years and protects an invention that has a short market life.
Innovation patents are being phased out; the last day for filing an application for an innovation patent was 25 August 2021. Existing innovation patents will continue until their expiry.
Who can register a patent?
A person who can register a patent includes:
- the inventor;
- a person who derives title to it by operation of law, such as under a will; and
- a legal representative of the people named above, if they have died.
More than one person can be registered as the patent owner.
If there are two or more registered owners, each of them is entitled to an equal, undivided share in the exclusive rights to the patent.
Each may exercise the rights for their own benefit without accounting to the other owners but may not grant a licence to exercise the rights, or assign an interest in the patent, without the consent of the others.
Patent rights are considered personal property and the patent system allows the patent to be assigned to another person. The rights may be registered on the Personal Property Securities Register.
Provisional applications
A provisional application allows an inventor to establish a priority date and signals their intention to file a full patent application.
It also allows the inventor time to assess whether the invention is worthy of the time, effort, and expense of filing a full application.
The provisional application lasts 12 months.
Publication
Details of a patent application are published in the Australian Official Journal of Patents.
Examination
When an application is ready to be assessed, the applicant has two months to request examination of it.
Examination involves assessing the application against the requirements of the Act.
The application is either accepted or the applicant receives an adverse report.
If an adverse report is received, the applicant may adjust the specifications to try to resolve the problems identified. If the problems cannot be overcome, the application lapses.
Objections to a patent can be made within three months of a patent application.
Applying a patent overseas
An Australian patent protects that patent within Australia only.
To protect a patent overseas, an inventor may file a patent application for a particular country or file an international application under the Patent Cooperation Treaty, which gives automatic protection in 152 countries.
Searching for a patent
A patent search can help determine who owns a patent, check that a patent is not being infringed, and garner information on competitors for research. The Australian patent database, AusPat, is run by Australian Government agency IP Australia.
International patent databases are run by agencies such as the World Intellectual Property Organisation and the European Patent Office.
Patent infringement
A person infringes a patent if they exploit a patent without the patentee’s consent. There are limited exemptions, such as when an act is done for experimental purposes, including to determine the properties of an invention, or to improve or modify it.
Infringement proceedings must be started within three years of when the patent is granted, or within six years of the infringement, whichever period ends later.
Remedies
Relief available from a court includes an injunction, damages, or an account of profits.
Damages may involve an additional amount after the court considers factors such as the flagrancy of the infringement and the need for deterrence.
How Gibbs Wright Litigation Lawyers can help
You can discuss your patent or intellectual property law matter with one of our experienced IP lawyers here at Gibbs Wright. Call us today for a no-obligation, confidential consultation.
