Patenting and Commercialising Innovative Technology

In the world of bright ideas and innovation, Australia has delivered its fair share. Australian innovation in science and technology alone have helped to enhance today's global environment and provide us all with better standards of living.

However, just having an idea is not enough. You need to obtain protection and then get it to market.

When to File Patent

In Australia and in most overseas countries a patent application must be filed before details of the invention are made publically available and before the invention is commercially used. Far too often, patents are considered after commencement of commercialisation of the invention. Although some countries, including Australia do have a grace period for disclosure, it is best to avoid disclosure before filing a patent.

Obtaining a Patent

In Australia, the registration of patents is administered by the Australian Industrial Property Organisation (AIPO), the umbrella organisation for the Australian Patent Office. The Patent Office is headed by the Commissioner of Patents, who is conventionally the Director of AIPO.

The usual steps in obtaining an Australian patent are:

1. Preparation and filing of a patent specification with AIPO to obtain a priority date. A patent specification can be prepared either by the applicant or a registered patent attorney and provides a technical description of the invention together with claim(s) (paragraphs) which define the invention and the scope of monopoly being sought.

2. Twelve months from the priority date, it is usual that a complete patent application is prepared and filed. The complete patent application is subsequently examined by an AIPO examiner skilled in the relevant field of technology. The examiner examines the patent application for compliance with the Patents Act and an applicant (usually via a patent attorney) has the opportunity to argue against any objections raised by the examiner. If all objections are overcome the application is accepted.

3. After acceptance there is a statutory period where third parties (for example, competitors) can oppose the grant of a patent. Assuming no opposition, a patent is granted and this usually occurs some two years after filing the complete application. Similar procedures exist overseas and patents are usually obtained in each country where a market for the innovation exists.

After filing the first patent application (step 1), solicitors are often involved in the commercialisation process, assisting applicants with company structures, leases, financing, manufacturing and distribution contracts etc. Alternatively, solicitors play a crucial role in the sale, licensing or joint venturing of innovative products (for instance, where an applicant uses a third party to exploit the innovation). Further, solicitors are involved in enforcement (infringement) actions and settlement negotiations involving patents. Solicitors and patent attorneys typically work together in these areas.

Patent drafting requires substantial specialist skill and expertise and a Patent Attorney registered under the Patents Act are exclusively permitted to prepare and file patent specifications on behalf of patent applicants.