Although applying for a patent is often necessary to protect your invention and your ability to commercialise the product, it can be a long and expensive process. Consider these common patent applications issues before applying to minimise any objections and your application getting rejected.
Selling or discussing your invention publicly before applying
A common requirement for all types of patents (innovation patent and standard patent) is that the invention is new (or in legal terms, ‘novel’).
If you speak publicly about your invention or sell it before applying for a patent, you may have already compromised your patent application. When assessing if an invention is novel, its disclosure in patent databases, textbooks, journals, websites or sale and use in the market (including demonstrations of the product) is likely to indicate it is not new.
To ensure your invention is kept secret before the patent application, any discussions about it even with employees, business partners or advisers should be kept confidential. It may be necessary to have written confidentiality agreements with everyone involved with the innovation (including prospective partners and employees).
Not thoroughly searching Australian and international patent databases before filing
An extensive search of Australian and international patent databases is crucial to understanding the likelihood of your patent application succeeding. This is because a patent is unlikely to be deemed ‘novel’ when a similar invention has already been patented. This search also helps to ensure you are not infringing on someone else’s intellectual property. Consequently, this step can save you valuable time and money.
Up-to-date Australian patent data can be searched for free using IP Australia’s system AusPat. There are also a number of free international patent databases including the World Intellectual Property Organisation’s ‘Patentscope’, the United States Patent and Trademark Office’s database and the European Patent Office’s ‘Espacenet’. Additionally, it is worth searching the internet, journal publications and existing products more broadly.
By having an extensive understanding of what is already out there, you can assess the viability of your application and also make points of distinction in your application to help minimise the chances of objections and resubmissions.
Insufficient description
Another common issue with patent applications is having an insufficiently clear and complete description. A description is necessary for all patent applications. It needs to completely describe the invention to the extent that other people can reproduce it based on the description. It must also prove the best method of performing the invention. There are strict formalities for patent application descriptions which must be adhered to (such as font, page layout, page numberings and spacing). These are detailed in the Patents (Formalities Requirements for Patent Documents) Determination 2019.
Your standard or innovative patent application could also be compromised if your invention is disclosed to the public after filing a provisional application which does not adequately describe the invention.
Applying for something which is not patentable
Patents are granted over devices, substances, methods or processes which are new, inventive and useful. An application for a principle, idea, mathematical model or theory without the practical method/process or other means of manufacture is not patentable.
In line with this, another issue occurs when a patent application is seeking to protect a design rather than the way the invention works. If you want to protect the appearance of your product, you should look into registering the design rather than filing a patent application.
Takeaway
Ultimately, patenting your invention is often a crucial step to commercialise your product. Before filing your patent application, it is imperative that everyone working in and around the invention keeps it secret as disclosing the product publicly in any way can jeopardise your ability to patent it. It is also necessary to have a comprehensive understanding of any similar products both in Australia and internationally to assess the likelihood your application will be accepted. It may be necessary to seek legal advice to ensure your patent application adheres to all of the necessary requirements and is the best means to protect your work.
If you would like to speak with our intellectual property lawyers, just contact us via 1300 337 997 or by filling out the contact form.
Brigid is a legal intern at OpenLegal, working with our legal content team. She is currently completing her Bachelor of Laws and Bachelor of Arts (International Studies) at the University of Technology Sydney. Her interests are in digital/privacy and startup law.
Phil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.
