PATENTS A brief overview and costs
A patent provides the exclusive right to exploit the invention defined in the claims appended to the patent specification. However to be valid a patent must be in respect of an invention which was not previously published anywhere in the world at its date of filing.
STANDARD PATENT
In the case of a Standard Patent the application process typically includes, filing an application accompanied by a provisional specification, followed up within 12 months by filing an associated complete specification with appended claims which is published and which must be examined and amended where necessary to overcome examination objections.
The examination process may raise issues such as patentable subject matter, internal consistency of the specification and claims which, if left unamended could lead to invalidity, in addition to novelty and/or inventive step issues. When all examiner's objections have been overcome the application is advertised as accepted, pending grant.
If the pending grant is opposed by a third party on grounds specified in the Patents Act, opposition proceedings commence and the grant will be delayed, prevented or restricted. If opposition is not lodged and the sealing fee timely paid, the patent is granted. This process typically takes between 3 to 5 years. Annuities are payable commencing at end of year 5 and continuing until the end of year 19.
INNOVATION PATENT
The application process typically includes filing a complete application for an Innovation Patent either in the first instance, following the filing of a provisional application or divided from a standard patent application.
The significant distinguishing features of an innovation patent are, a lower standard of invention is protectable, the patent is typically granted within a month or so of filing without examination and the term is limited to 8 years. An innovation patent provides the same level of protection as does a standard patent but can only be enforced after it has been subject to examination and certification by the Patent Office. Examination can also be requested by a third party as can re-examination after certification. Annuities are payable commencing at end of year 2 and continuing until end of year 7.
Most importantly an innovation patent cannot be proved invalid through having no inventive step, only an innovative step is required, a much less stringent threshold.
INTERNATIONAL PATENT APPLICATION
Filing an International Patent Application is a means of delaying the filing of separate patent applications in individual participating countries or regions for a period of up to 31 months, while in the meantime having the ability to undergo International Preliminary Examination with a view to gaining a better understanding of the potential worth of the patent before committing to the cost of filing worldwide applications, or for easing initial cash flow pressures. The international phase is a five step process, including filing the International Application, receiving an International Search Report about 3 months later, publication by the International Bureau around the 18month date, conducting International Preliminary Examination after demanding same at the 19 month date, and finally, entry into the National Phase in selected countries or regions at the 30/31 month date.
CHARGES
The charges indicated below are for the major predictable costs and are inclusive of official fees and GST and are provided on the basis of Tax Invoice paid prior to filing specified action.
Preparing and Filing Provisional Patent Application, typically $3000 to $4000
Filing Request for and reporting International - type prior art search by Australian Patent Office (optional but recommended) $1785
Additional costs will be incurred if applicant requires consideration and advice as to the relevance of the Search Report.
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Preparing and Filing Standard Patent Application, typically $3500 to $5000
Preparing and Filing Request for Examination, $750
Additional costs will be incurred if applicant requires consideration and advice as to the relevance of the issued Report and for filing a response. Also further examination reports may issue.
Filing Sealing Fee payment, $450
(Additional costs if claims in excess of 20)
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Preparing and Filing Innovation Patent Application, typically $3000 to $4000
Filing Request for Examination, $650
Additional costs will be incurred if applicant requires consideration and advice as to the relevance of the issued Report and for filing a response. Also further examination reports may issue.
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Preparing and Filing International Patent Application, typically $7000 to $9000
Filing Request for International Preliminary Examination, $1400
Additional costs will be incurred if applicant requires consideration and advice as to the relevance of the issued Report and for filing a response.
National phase entry - Varies from country to country but I suggest budgeting $10,000/country over a period of several years to gauge desirability of proceeding in wish-list of countries.
Before undertaking any action on a client's behalf I am happy to provide a quote.
The above charges are for taking the action specified. The patenting process requires a series of exchanges between the Patent Office and the client before a settlement ie. patent grant, is achieved and further costs are incurred in this "settling" process.
For detailed information I recommend perusal of the Patent Office website www.ipaustralia.gov.au