What is IP?

Patents

What can be patented?

Any commercially useful method, process, product or device that is innovative or inventive can be patented. However, some things are not patentable by law—for example, mathematical models, purely mental processes and artistic creations.

Patent Legislation

In Australia, patent law is prescribed by the Commonwealth Patents Act 1990. Australian patents are administered by IP Australia.

Examples of patents

  • In 1932, Schuyler C Hulett patented the coat hanger in the USA.
  • In 1948, Andrew J Moyer patented the method of producing penicillin in the USA.
  • VVIn 1955, Mervyn Victor Richardson patented the Victa Lawn Mowerin Australia.
  • In 2000, SanDisk patented the flash memory cards used in digital cameras and MP3 players in the USA.

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Secrecy is critical

A patent can only be sought before an invention is ‘in the public domain’.This means that telling a friend, approaching a financier or disclosing information to a potential business partner can possibly disqualify an application. In certain circumstances in Australia, public disclosure of an invention will not affect the validity of a patent, provided a complete application is filed within 12 months of disclosure. However, not all countries recognise this grace period and inventors should not rely on the provision.

Search to be sure

An inventor should also conduct an extensive search of IP Australia’s existing patent databases as well as international databases to avoid wasting time and money trying to patent an invention that has already been patented by someone else.

How to obtain a patent

  • The creator of an invention must first decide between two types of patents.
  • A standard patent lasts for a maximum period of 20 years and can have an unlimited number of claims for different aspects and uses of the invention, provided it is new and inventive.
  • An innovation patent lasts for a maximum period of eight years, and is a faster and less expensive option designed for inventions that represent an innovative step for an existing invention; the inventive threshold for an innovation patent is lower than a standard patent.

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The most common technology patented

In 2004, over 2,800 new patent applications came from pharmaceuticals and cosmetics areas, making it the most active technology area. Organic fine chemicals and medical engineering fields also filed a high number of applications with over 2,250 and 2,100 applications respectively.

There is no such thing as a 'world patent'

Patents must be obtained in each country where the invention will be sold to achieve protection in those markets. There are two ways of seeking international protection. Either individual applications can be lodged in each country, or an application can be made through the Patent Cooperation Treaty (PCT) where a single international application can be filed in any number of the member countries. For more information on PCT applications, visit www.ipaustralia.gov.au/patents/international_index.shtml

Costs for an Australian patent

Lodging a standard patent is relatively inexpensive, but the process can be quite complex, so seeking advice from a patent attorney is recommended. While attorney fees add expense, their professional advice can add significant value to the strength of the patent.

On average, including attorney fees, an applicant can expect to pay between $5,000 and $10,000 for a patent in Australia. However, fees will vary on the complexity of the technology and the number of countries in which protection is sought.


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What does 'patent pending' mean?

Patent pending refers to an invention for which a patent application has been lodged but not yet granted. The term is mainly used to alert competitors and the public-at-large, that the inventor is seeking formal IP rights to protect the technology.

Infringement

A patent owner can only take legal action for patent infringement if their patent has been successfully examined and granted by IP Australia. It is the responsibility of patent owners to enforce their legal rights (IP Australia does not monitor patents for infringement by others). While patent matters are often resolved without third-party involvement, disputes can be taken before a court. Proving patent infringement can be complex and costly, requiring specialised legal advice.

Patents in the news

  • The US District Court ordered software maker Microsoft to pay Guatemalan inventor Carlos Amado nearly US$9 million for patent infringement. The jury decided Microsoft had infringed a patent Amado received in 1994 for software he wrote that linked the company's Excel spreadsheet and Access database applications.
    Source: Gates' Microsoft Hit With $8.96M Patent Fine, Forbes, 6 July 2005.
  • The pharmaceutical group Mayne have recently been found in breach of a patent. The English Court of Appeal ruled that Mayne's generic breast cancer drug infringed a patent of Pfizer subsidiary, Pharmacia Italia. This infringement decision could cost Mayne up to $5 million.
    Source: Melbourne Age, 6 August 2005.
  • The US Patent Office rejected a patent application from Apple Computers for technology in their iPod music player because Microsoft had already filed a similar application. The iPod holds a significant share of the portable music player market, accounting for 75% of all MP3 player sales. If Microsoft is successful in its application, it may licence its technology to Apple.
    Source: The Australian, 16 August 2005.
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