What is a patent?

A patent is a proprietary right in an invention. In most cases, it provides the owner with the exclusive right for up to 20 years to make, sell or use a product or process. In exchange for this monopoly, the patent is published so others can see how the invention works and build on that knowledge. The patented invention is also made available to the public to use once the patent lapses.

Can anything be patented?

No. To be patentable the subject matter of the application must be novel (i.e. new), inventive, and must have utility (i.e. be useful). In addition, some subject matter is excluded. Examples of excluded subject matter include schemes or plans, pure discoveries without an industrial use and naturally occurring substances or organisms. It is important to note that excluded subject matter varies between jurisdictions. For example, methods of medical treatment are patentable in Australia but not New Zealand or Europe. In some cases, it is possible to work around the exclusions by framing an invention carefully.

Can’t I just use my invention now and patent it later?

No*. Because patentable subject matter must be novel, using your invention, publishing details of it, or offering it for sale will destroy the ‘novelty’ in the invention and prevent you from obtaining a valid patent.

*Some countries have provisions allowing for a valid patent to be obtained even if the invention has been disclosed before a patent application is filed, for example, Australia, New Zealand, and the USA each have one year “grace periods”. However, there are

What if I use it in secret?

Secret use will also invalidate a patent in some countrues – the rationale for this is that you shouldn’t be allowed to extend the 20 year monopoly by using (or selling) your invention in confidence for a while and then applying for a patent.

Can anyone be granted a patent?

No. Only the true and first inventor of the subject matter of the patent application, an assignee of that inventor or the estate of the inventor/assignee can be granted a patent.

My employee developed an invention for me – doesn’t that mean I own it?

Often this will be the case but it may depend on the terms of the employment agreement and/or the duties the employee was required to carry out. In some countries, it is still necessary to obtain an assignment from the employee and name them in in your patent application for it to be valid.

How long does a patent last for?

In most countries patents are granted for 20 years and the time period begins on the date an application is filed in that country or under the PCT. In most countries, official fees are charged by the patent offices to renew the patent at various stages during its lifetime. If renewal fees are not paid, the patent will lapse.

Why is the first filing date important?

The first filing date (or “priority date”) is the date on which the novelty and inventiveness of the subject matter of a patent application is assessed.

Can I get a world patent?

No. Patent rights are territorial. This means that a patent will only protect your invention in a specific country. If you want protection in other countries you have to file patent applications in those countries. An international convention allows you to file a patent application in one or more other countries up to 12 months of the first application for your invention and keep the same priority date.

What is the PCT?

PCT stands for Patent Co-operation Treaty. A PCT application is a single patent application made with the World Intellectual Property Organisation (WIPO). A PCT application can cover over 150 different countries. However, at the end of the PCT process, it is still necessary to file separate applications in the individual countries in which you want a patent. One of the big advantages of a PCT application is that it enables applicants to delay both the expense and the decision of whether or not to file patent applications in other countries by up to 31 months (measured from the filing date of the first  patent application on which the PCT application is based). Another major advantage of the PCT process is that you can have your PCT application examined, and this may help you to decide whether it is worthwhile proceeding with overseas protection of your invention.

It is important to check that that the countries you are interested in are covered by the PCT as there are some notable exceptions.

How do I get a patent?

The first step in obtaining a patent is to file an application along with a patent specification describing the invention. The type of application you file and where you file it will depend on an appropriate patenting strategy.

What happens once a patent application is filed?

In most countries, after an application is filed it will be examined to ensure that the subject matter is novel, inventive, has utility and does not relate to excluded subject matter. This usually involves a search of the ‘prior art’ (ie what was known or used before the filing date) to assist in determining the novelty of the subject matter and whether it embodies an inventive step. The examiner may also check to ensure that procedural aspects of the legislation have been complied with, such as checking that the necessary forms and fees have been completed and paid. Examiners normally issue a report on their findings. Where objections have been raised, applicants will be given an opportunity to respond and/or amend their application. A number of reports may issue before the patent is finally accepted or rejected.

Does acceptance mean I now have a patent?

No. Until a patent is granted you only have a patent application. Some jurisdictions give interested parties an opportunity to oppose the grant. If there is no opposition, or if the opposition is successfully resolved, the patent will proceed to grant.

What rights does a granted patent give me?

In most countries, a patent gives the owner the exclusive right to make, use, sell, or otherwise deal in the invention.

How are those rights infringed?

The rights are infringed by anyone who does any of those things without the consent of the owner of the patent (or a licensee). The patent owner will need to bring legal proceedings to enforce their rights.

I have been accused of patent infringement but I didn’t copy anyone else’s product – doesn’t this mean I am ok?

No. Patents aren’t like copyright. They protect the way things work not what they look like. Whether an infringer copied the owner of the patent is irrelevant to the question of infringement (but might be relevant when assessing damages). For this reason even innocently importing a patented product might still amount to infringement.

So what is the test for infringement?

To prove infringement, the owner of the patent only needs to show that a product or process is covered by one of the patent claims.

What is a claim?

A claim is one of the numbered paragraphs at the end of the patent specification which defines the monopoly claimed in the invention.

What remedies are available for infringement?

If  a person is found to infringe a claim in a granted patent, the courts can stop you making, importing or selling the infringing product, require them to hand over for destruction any infringing products or equipment used to make those products, and make them pay the patent owner any damages/losses which it has suffered as a result of your sales of infringing products, or any profits you made from those sales. They may also be required to pay some of the patent owner’s legal costs.

Is it possible to challenge the validity of a granted patent?

Yes, although the mechanism to do this varies in different countries. The most common ground is that the invention was disclosed or published before the filing date of the patent application.

Can I sell or licence my patent?

Yes. A patent is a property right which can be sold, mortgaged or assigned by the patentee to third parties in exchange for payment, or licensed in exchange for royalty fees.