A patent provides you with a legal monopoly over your product, substance, method or process. It facilitates commercialisation by providing an exclusive right to exploit the invention over the life of the patent in exchange for public disclosure.
At innofy we work for the organisations that we believe are going to change the world, specialising in start-ups and research organisations. We believe that we unlock most value to our clients by specialising in what is important to them, which is achieving robust patent rights that encompass their commercial opportunities.
What is the process to apply for a patent?
Having your patent granted is not a straightforward task. Having the monopoly to exclude others from using, making and distributing a product or method for 20 years is a very powerful commercial advantage that cannot be obtained without the necessary due diligence. Don’t worry, our team at innofy are ready to guide you through the process, from start to finish.
Step 1: The provisional patent application
The first application is typically a provisional patent application, which functions to stake your spot in time. The date of filing the provisional patent application will become the date at which the patentability of your technology will be assessed – known as the “priority date”. Importantly, by itself a provisional application is not sufficient to obtain any patent rights. It describes the concept of your invention, and allows a further 12 months to figure out the subtle details and potentially raise investment.
Unlike complete patent applications, provisional patent applications are not published. This can be advantageous: if after 12 months you decide you still have further tinkering to do, or you wish to keep the invention as a trade secret, the provisional patent application can withdrawn or abandoned without significant ramifications – provided that the invention has not been publicly disclosed elsewhere. You will, however, lose your priority date.
Step 2: The complete patent application
Within 12 months of filing the provisional application, a complete patent application must be prepared and filed in order to keep the application pending. This application is treated as if it was filed on the date that the provisional patent application was filed (providing the provisional patent application is considered to adequately describe the invention). If the focus of the invention changes within the intervening 12 months it is possible that the provisional application will no longer be deemed to support the changed invention. If this occurs, the full patent application loses the ability to claim the filing date of the provisional patent application (and resumes its own, later, filing date – or priority date).
At the stage of filing the complete patent application – a decision must be made regarding whether patent applications will be filed in multiple countries, or solely in Australia (and perhaps one or two others). Typically this decision will be made with regard to your commercial objectives. For example, it may be prudent to pursue applications in jurisdictions which will offer a commercial return sufficient to justify patent costs in that market.
We generally advise filing the complete patent application as an International PCT application if you envisage obtaining patent rights in more than two or three countries. International PCT applications are eventually divided out into multiple applications in those countries and regions that are of value to you, however the advantage of the PCT application is it defers this decision – allowing you to conduct further market research, generate more revenue, and the like.
In Australia, it is also possible to pursue either a standard complete patent application (which lasts for up to 20 years from your filing date), or an innovation complete patent application (which lasts for up to 8 years from your filing date). IP Australia provides a good guide to the differences between standard and innovation patents here.
Step 3: Publication of the application
After 18 months from the first filing, or priority date, (typically the provisional application), the complete application is officially published. Publication is important, particularly because sets the date that unauthorised competitors can become aware of the patent application. Once you have a granted patent, legal action can be taken against competitors that are unlawfully infringing the patent on or after the publication date.
Step 4: National and/or regional phase entry
If you chose to file a PCT application, after 30 or 31 months from the date of the first filing (usually the provisional application) the application can be divided out into individual countries. A couple of the most commonly elected countries for patent filings is provided in the table below.
|Country||NPE Due Date|
|Republic of Korea||31|
|United States of America||30|
For a complete list of national/regional phase entry time limits, click here.
Step 5: Examination
Once each application has entered the national/regional phase it is subjected to a formality check to ensure that the application meets all the administrative requirements of that particular country or region. Then a substantive examination occurs, separately on each application by government Patent Examiners, where the application is assessed against the local requirements for patentability (for example, to ensure that the invention is new, inventive, useful, and sufficiently described). Iterative rounds of examination, which is effectively a negotiation with the Patent Office, typically occur, until the claims are amended such that the Patent Office is happy with the scope of the invention defined by the claims.
It is worth noting that in many countries patent examination does not commence for many years after national phase entry.
Step 6: Acceptance and Grant
The Notice of Acceptance (or similar) issues if and when the Examiner is satisfied that all requirements for patentability are met. At this stage, we can start chilling the sparkling wine, as there is little preventing the patent from being granted (unless an external third party files a formal notice of opposition to the grant). Typically, further government acceptance fees must be paid within a few months before the patent will proceed to grant.
Why use a Patent Attorney?
Your patent specification will be examined, not only by patent examiners during the application process, but also by your investors and potentially the eventual acquirer of the technology. The patent applications that we draft and prosecute will be put under scrutiny by other patent attorneys, not just in Australia but around the globe. Particularly for research organisations and start-ups, the quality of your patent application is of upmost importance. We know that our patent applications stand up.
Obtaining the expert advice of a patent attorney is of greatest value at the start of the patent process – when drafting the initial application. It during the drafting of the application when the scope of the invention is defined, and errors in this stage will impact on the ability to obtain a robust patent in the future.
Information as to why you should choose innofy to draft and prosecute your patent applications, can be found here.
How much does it cost to patent my technology?
We understand that the budget is one of the most important aspects for our clients. When on the runway to market or an acquisition, important questions need to be answered, like – can we actually make it to the next funding round? Being able to understand how much things are going to cost, is something that we aim to provide our clients. Click here to learn more about innofy‘s billing practice and the advantages of this for our clients.
In addition to our service charge, government patent offices also charge official fees. These costs are highly variable between countries, with Australia being one of the cheaper countries in which to file a patent. At innofy we take pride in offering our expert services at a rate that we believe is exceptionally competitive. Therefore, we are happy to advertise the representative government official fees (which are of course always subject to change).
Provisional patent applications
The Official Fee for filing a provisional patent application in Australia is $110.
Complete patent applications
The cost of filing a complete standard patent application in Australia is $370, and a standard innovation patent application in Australia is $180.
If you intend to file a patent in more than two or three countries, it is typically much more cost efficient to file an International PCT application. PCT applications have a much larger up-front cost, however, and typically result in Official Fees of around $3000-$5000. This cost depends primarily on the number of pages of your patent application.
National/regional phase entry
At the national/regional phase entry stage, overseas agents must be engaged to act before national patent offices. We believe in using agents that share our vision of increasing innovation, and do not subscribe to the international back scratching arrangements upon which some international firms rely. We believe that our clients should be consulted in the process of selecting a suitable overseas agents (should they wish to be involved).
|National/regional phase entry Official Fee|
|Europe||$5424 - $687522>|
|1Fees based on less than three independent claims, 20 total claims, and no multiple dependent claims, and specification of less than 100 pages.
2Fees based on less than 16 claims.
3Fees based on specifications between 30-100 pages.
For a more detailed list of the Official Fees for National/Regional Phase Entry, please contact us.
In order to commence examination, in many jurisdictions the respective patent office charges a fee for filing a request to commence examination. This cost in some example jurisdictions is outlined here:
|Country||Official Fee to Request Examination (AUD)|
|Europe||Inc. in NPE costs|
|United States||~$4001 status|
|Japan||~$1250 + ~$45 per claim|
|South Korea||~$165 + ~$50 per claim|
|All costs will fluctuate in line with currency exchange rate.
1Assuming small entity status
Once examination has started, the primary costs is that of your patent attorney, foreign agent, and any extension fees that are required. At innofy we commit to providing you with any Examination Reports within five working days – giving you the opportunity to consult and collaborate with all internal stakeholders. Simply put – we don’t want you incurring extension fees. We will do all we can to make sure that doesn’t happen.
We are proud to offer all out clients with flat fee invoicing for all work. This puts our clients of complete control of their finances, and they will never receive a shock invoice issued by us.
Maintenance and renewals
Annual renewal fees (sometimes called maintenance and/or continuation fees) must be paid on patents and patent applications in order to keep them in force.
In Australia, these fees begin on the fourth anniversary of your patent application (regardless of whether it is granted or not). These government fees are currently as follows:
|Anniversary||Official Fee (AUD)|
|4th to 9th||$300|
|10th to 14th||$550|
|15th to 19th||$1250|
|20th to 24th (pharmaceutical patents only)||$2550|
|Late payment fee||$100 per month (6 months max)|
Please contact us for information regarding renewals fees payable in other jurisdictions. Click here for basic information regarding the cost of renewals fees in Europe. For similar information for the United States (called “maintenance fees“), click here.