3.3.1 What is a patent?
A patent is a type of legally registered IP protection applicable only to innovations that are inventive (i.e. not obvious to one skilled in the relevant field) and useful, including devices, methods, processes and substances.
The patent application process is explained later in this training. A patent application is ‘pending’ while it is formally considered for grant.
When granted, a patent provides exclusive rights (a monopoly) to use, manufacture and market the IP-based products or services in the jurisdiction of the registration (e.g. Australia). In each jurisdiction, to be granted these rights, a separate patent application must be made; global patents do not exist. The term of a standard patent is 20 years. Pharmaceutical patents can last up to 25 years.
Patents are the most legally robust and therefore valuable type of IP protection, partly because they cover inventions, but also because the patenting process requires precise definition of the IP to underpin the legal rights.
3.3.2 The patenting process
The typical patenting process in a university is:
- The IP creator makes a confidential disclosure of the IP to the university’s TTO, tentatively defining the IP.
- With support from the TTO, the IP creator conducts a prior art novelty search. If the result favours it, a prior art inventiveness search follows. The results of these searches may induce the creator to redefine the tentative IP.
- The TTO contacts a patent attorney, who drafts a patent specification, preferably with claims, based on information provided by the IP creator. The IP creator reviews the draft and may suggest amendments.
- Under instruction from the TTO, the patent attorney files a patent application and the specification with the Government registering agency for the desired jurisdiction (e.g. IP Australia). This sets the critical ‘priority date’; any information disclosed after this date is not prior art in respect of this IP and cannot be used to invalidate its patentability. Under international agreements, a patent application in any jurisdiction sets the priority date in almost all jurisdictions.
A patent is ‘pending’ when filed but not yet granted or abandoned.
Three filing options/phases exist and are usually taken in the order shown below, though the first two are not mandatory. Separate filings for the same specification can exist simultaneously in two or three phases when two or more jurisdictions are desired.
- Provisional application
Claims are not mandatory because they are not examined in this phase. This is the lowest cost option for establishing the critical priority date, and it may be used to defer subsequent phases and costs by up to 12 months. By that time, one or both types of non-provisional (‘complete’) applications, B and/or C below, must be filed, or the application must be abandoned, or recommenced (‘rolled over’). Unlike B and C, legal rights are not enforceable retrospectively to the filing date if a patent is eventually granted.
- PCT (International) application
All major jurisdictions are signatories to the Patent Cooperation Treaty (PCT). A patent is not granted for a PCT application, but in all jurisdictions that later grant national/regional patents, legal rights are enforceable retrospectively to the PCT application date. Claims are mandatory in a PCT application and a preliminary examination of the claims occurs, which defers the deadline for the national/regional application by 18 months, i.e. a total of 30 months if added to A. Although it adds slightly to overall costs, deferment of the high national/regional costs is often desirable.
- National/regional application
This must be filed in the desired jurisdiction, and separate applications must be filed if protection in several jurisdictions is desired. Claims are mandatory. Choosing this option alone is the fastest way to obtain a patent, subject to examination. If A and/or B are bypassed, costs overall are slightly less, but the major costs are not deferred.
For more information about jurisdictions other than Australia, visit http://www.wipo.int/directory/en/
- Provisional application
- The IP owner may now or later disclose the IP (through publication in an academic journal, for example) but should exercise caution if the IP is still evolving with ongoing R&D.
- The content of the application is published by the registering agency about 18 months after its priority date. If an application is meanwhile abandoned or cancelled, it is not published. This gives IP owners some time to abandon the application if they wish to maintain secret IP.
- In the national/regional phase, the claims are examined for patentability. The IP creators are usually required to assist the patent attorney to respond if claims are rejected or questioned. The applicant may amend the claims. Several rounds of examinations are common. This stage of the process, the prosecution, may take several years: 3-5 in Australia and the USA, 5-7 in Europe, 10+ years in less developed countries.
- If a patent is granted, no further changes to the claims are allowed. The grant is made public so that competitors may challenge the patent’s validity.
- Maintenance fees must be paid throughout the term of the patent (20 years) to prevent it lapsing. In Australia, these are payable annually.
3.3.3 Patent costs
Patenting is by far the most expensive type of IP protection. For example, a single patent granted and maintained for 20 years in Australia, USA and four countries in western Europe will typically cost AUD140000 to 250000 (in 2018). It will cost significantly more if any appeal against rejection is required, or if currency exchange rates change adversely.
In the absence of support from an industry partner (indicating that the commercial viability of the IP is poor), a university will probably not proceed to the PCT and/or national/regional phases of the patent application. This imposes significant time constraints on all involved due to the limited lifetimes of provisional patent applications and PCT applications (12 and 18 months respectively).
Typical costs for a single patent, including attorney fees and government fees, excluding university in-house costs (e.g. for prior art searches) and any litigation, are:
|Phase||Detail||Approximate cost (2018 AUD)|
|National/regional||Initial filing and exam fee||$5,000 (Australia)|
$14,000 (European Patent Office)
|National/regional||Prosecution and grant|| $6,000 to $20,000 (Australia)|
$11,000 to $50,000 (USA)
$20,000 to $76,000 (EPO, including validation in four typical countries in western Europe)
|National/regional||Maintenance fees total for 20 year term||$11,000 (Australia)|
$27,000 (EPO, 4 countries)