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May 24, 2016

Steps to Patenting an Idea

We are often asked  – what are the steps to patenting an idea? To help out budding inventors – we have put together a list of some of the most basic steps to patenting an idea.

Step 1. Check if your idea is new?

To obtain a patent your idea will need to be novel and inventive. In other words, your idea can’t have been done before (i.e published, sold, made etc.) in Australia or anywhere else in the world.

Accordingly, as a first step, we recommend that a patent and background technology search is undertaken to determine if the idea is in fact novel. There are are few good resources to undertake an initial patent search these include Google Patents, Patent Lens, Espacenet, and of course, the Australian patent office database – AUSPAT. It is noted that Espacenet typically has the widest coverage having over 90 million patent document from 100’s of countries, whereas the AUSPAT will only provide patents filed in Australia (so is quite limited).

We typically collate the ten or so most relevant patents and then analyse each patent to see what novel elements of your idea are likely to be patentable. We sometimes also obtain trade magazines or web articles to compliment the patent search results.

We then provide an opinion as to the likelihood of patentability of your idea in Australia and overseas (typically with a focus on USA patents).

 Step 2. File a Patent Application

To protect your idea you will need to file a patent application. There are a variety of strategies that may be taken at this stage. However, one of the most typical first steps is the preparation and filing of a provisional patent application.  A  provisional patent application provides an initial 12 month “patent pending” period  in which you are able to disclose your invention and determine whether or not to continue  with a complete patent application.

A  provisional patent application provides an initial 12 month “patent pending” period  in which you are able to disclose your invention and determine whether or not to continue  with a complete patent application.

Depending on the potential market and  the available budget  the complete patent application may be one or more of: an  Australian standard patent application; an innovation patent application; direct overseas patent applications (such as a US Patent Application); or an international patent application.  Typically we conduct  a strategy workshop with our clients at this stage to work out precisely where the greatest return on investment is likely to be.

 Step 3. Prosecute the Patent Application through to Grant

Once the complete patent application is filed,  in most cases the patent application will need to be formally examined by the respective patent offices ( that is IP Australia in the case of Australian patent applications). The patent office will examine the patent application and determine if the claimed subject matter meets the legal requirements for a patent that include  novelty, inventive step and sufficiency of disclosure. The patent Examiner will then issue  and examination report indicating whether or not the patent has been accepted.

It is quite common  for an Examiner  to identify at least some issue with a patent application  and the Examiner will detail this issue  in an examination report and give the patent applicant an opportunity to address the issue.  At this stage,  we are typically deeply involved in addressing the Examiner’s concerns  and making sure that any comments and amendments that are made to the patent office are likely to place the patent application in order for acceptance, not prejudice your rights, and also provide robust commercial patent rights.

If you would like more information – please get in touch with The Patent Co Patent Attorneys

Patenting Basics

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