Procedure for grant of a patent

5.17 Patent rights do not arise automatically. A patent can be obtained only by following the procedure set out in the Patents Act and Patents Regulations. An understanding of the procedure for obtaining a patent is important to understanding Australian patent law generally. The steps in obtaining an Australian patent are described below. A flow chart outlining the stages in the patent application process is included in s 4 of the Patents Act and was reprinted in DP 68.[24]

Filing an application

5.18 For a patent to be granted, an eligible person must file an application in the form prescribed by the Patent Office. Eligible persons are the inventor of the invention claimed in the application, or a person to whom the inventor has assigned his or her rights in the invention.[25] A patent application must include a specification of the invention, which contains instructions adequate to enable a skilled person in the relevant area of technology to produce or perform the invention. The specification must also indicate the ‘claims’ that define the invention; that is, the scope of protection that the applicant is seeking.

5.19 Australian patent law recognises two types of patent applications—provisional and complete.[26] Provisional and complete applications may be filed to obtain either a standard patent or an innovation patent.

5.20 A provisional application need only contain a description of the invention.[27] Often, an inventor files a provisional application before all the details of an invention are known. The applicant then has 12 months to file a complete application.

5.21 A complete application must contain a full description of the invention, together with claims, and an abstract summarising the invention being disclosed.[28] A complete application may be based on one or more provisional applications, and only those claims that are ‘fairly based’[29] on the relevant provisional application will be entitled to the priority date of the provisional application.

5.22 The ‘priority date’ of a patent claim is important in determining whether the requirements for patentability of an invention have been met. As discussed in Chapter 6, the requirements of novelty and inventive step are assessed against the prior art as it existed before the priority date.[30] The priority date is typically the date on which a provisional application is filed in Australia, or the date on which an application is filed in another participating jurisdiction.[31]

5.23 An applicant may also elect to file a complete application with the Patent Office under the Patent Cooperation Treaty (PCT).[32] As discussed in Chapter 4, a PCT application designates all the jurisdictions that are parties to the PCT (including Australia), and secures an international priority date.

5.24 PCT applications that have entered the national phase (and will be processed as a complete application) are the main type of applications received by IP Australia.[33] In 2002–03, 16,278 PCT applications selected Australia as one of the jurisdictions in which an applicant wished to obtain patent protection and entered the national phase in Australia.[34] During the same period, 5,694 non-PCT applications for standard patents were filed with IP Australia.[35]

Divisional applications

5.25 Each patent application may claim protection only for a single invention.[36] If, following assessment of a patent application, a patent examiner finds that an applicant has claimed more than one invention in the application, the applicant may elect to file a ‘divisional application’—that is, a new application divided from the original or parent application. A divisional application allows an applicant to continue to benefit from the priority date of the original application. [37]

5.26 Divisional applications may claim subject matter not contained in the original application so long as all the features of at least one of the claims were disclosed in the original application. There are no statutory limits on the number of divisional applications that may arise from a single complete application.

5.27 The Patents Act restricts the subject matter that may be claimed in a divisional application, depending on the time at which it is filed.[38] However, a divisional application, once filed, is subject to the same procedural requirements, including examination, as any other complete patent application.

5.28 In its submissions to the Inquiry, IP Australia indicated that divisional applications are currently ‘open to abuse’.[39] In practice, such abuse may occur only in a small number of cases. However, IP Australia suggested that patent applicants are able to make strategic use of divisional applications in order to delay determinations by the Patent Office as to the proper scope of patent claims, or as to whether a patent should be granted.[40] IP Australia commented that the Patents Act allows an applicant to use a divisional application to obtain a de facto monopoly by extending the period within which to respond to an examiner’s adverse report. While this use of divisional applications may be legitimate in some circumstances, IP Australia suggested that it might be used tactically by an applicant in ‘newly developing areas of technology, such as genetics, where there is a question of [the] patentability of the subject matter’. Further, an applicant might avoid a decision in an opposition proceeding by withdrawing the opposed application and refiling it as a divisional application. To address these issues, IP Australia suggested that limitations could be imposed on the circumstances in which divisional applications are available.[41]

5.29 However, the majority of submissions and consultations on this issue did not support imposing additional limitations either on the period within which a divisional application may be filed or on the subject matter that may be claimed in a divisional application.[42] Submissions and consultations questioned whether divisional applications are being misused,[43] and commented on the lack of evidence that divisional applications claiming genetic inventions present a special case.[44]

5.30 The ALRC does not consider that reform of the Patents Act relating to divisional applications is required to address particular issues raised by patents over genetic materials and technologies. The concerns expressed by IP Australia about divisional applications are not limited to genetic inventions. Further, the weight of submissions considered that the current provisions are operating well and should not be amended without firm evidence of a problem.


5.31 Once an application has been filed with the Patent Office, a number of additional steps must be followed before a patent may be issued. An applicant must file a request that the Patent Office examine the application.[45] Examination is not automatic and a request for examination must generally be filed within five years of the date of filing a complete specification.[46] However, IP Australia’s standard practice is to direct applicants to file a request for examination, if no request has been received, at approximately 32 months from the priority date, although this period may vary according to IP Australia’s workload.[47] An abbreviated examination may be requested if an Australian patent application is related to a patent that has already been granted by the patent office in a prescribed foreign jurisdiction.[48]

5.32 The purpose of examination is to determine whether the invention meets the statutory requirements for patentability set out in the Patents Act.[49] The Patent Office carries out searches of previously published documents—including scientific and patent literature (‘prior art information’)—to determine the prior art material relevant to the claimed invention.[50] In addition, an applicant must disclose to the Patent Office the results of searches carried out by or on behalf of foreign patent offices in respect of the invention claimed in an Australian application, or in a corresponding patent application filed overseas.[51] An examiner with expertise in the relevant area of technology then examines the application, taking into account the information contained in the results of these searches and any other prior art information.

5.33 Examination of a patent application typically involves an exchange between the examiner and the applicant about the appropriate scope of the specification and the claims in light of the relevant prior art. This process is known as ‘prosecution’ of a patent application.

5.34 Following receipt of a request for examination, an examiner will make an initial assessment of an application for a standard patent and either accept the application as filed or issue a ‘first report’ detailing the procedural and substantive grounds for objecting to the application.[52] An applicant then has a period of 21 months to address the objections raised by the examiner. The examiner may issue further reports for each response by the applicant that does not satisfy the objections raised. An application for a standard patent will generally lapse if it is not in order for acceptance within 21 months after the date of the first report.[53]

Acceptance, publication and sealing

5.35 The Commissioner of Patents must notify an applicant of the decision to accept or refuse a patent application, and must publish notice of the decision in the Official Journal of Patents (Official Journal).[54] Formal refusal of an application is rare.[55] More commonly, applications for standard patents lapse for failure to obtain acceptance within the prescribed 21 month period following a first report. The Official Journal also publishes notices of lapsed applications.[56]

5.36 Publication of a notice of acceptance in the Official Journal should be distinguished from the publication of a complete specification for a standard patent. This typically occurs 18 months after the earliest priority date for the application,[57] and is also advertised in the Official Journal.[58] An application is confidential prior to publication of the complete specification, and only bibliographic details—such as the applicant’s name and title of the invention—are made available by the Patent Office.[59]

5.37 A patent is granted when the Commissioner of Patents causes the patent to be sealed with the seal of the Patent Office. For a standard patent, this will occur within six months of the date of publication in the Official Journal of the notice of acceptance of the application, unless the application is opposed.[60]

[24] Australian Law Reform Commission, Gene Patenting and Human Health, DP 68 (2004), Fig 5–2.

[25] If an inventor or his or her assignee is deceased, that person’s legal representative may file for patent protection: Patents Act 1990 (Cth) s 15, sch 1.

[26] Ibid s 29.

[27] Ibid s 40(1).

[28]Patents Regulations 1991 (Cth) rr 3.1, 3.2A, 3.3.

[29] The ‘fair basis’ requirement is discussed in Ch 6.

[30]Patents Act 1990 (Cth) s 18(1)(b).

[31] Ibid s 43; Patents Regulations 1991 (Cth) rr 3.12–3.14.

[32]Patent Cooperation Treaty, [1980] ATS 6, (entered into force on 24 January 1978); Patents Act 1990 (Cth) ss 88–93.

[33] IP Australia, Annual Report (2003).

[34] Ibid. IP Australia may not, however, have undertaken substantive examination of all of these applications: IP Australia, Submission P56, 4 November 2003.

[35] IP Australia, Annual Report (2003).

[36]Patents Act 1990 (Cth) s 40(4).

[37] The Patents Act does not provide for a divisional application based on a provisional application: Ibid s 79B; IP Australia, Patent Manual of Practice and Procedure Volume 2: National (2002), [9.8]. The requirements for filing divisional applications based on an innovation patent are set out separately: see Patents Act 1990 (Cth) s 79C; Patents Regulations 1991 (Cth) r 6A.2.

[38]Patents Act 1990 (Cth) s 79B(1); Patents Regulations 1991 (Cth) rr 3.11(2), 6A.1. See also Australian Law Reform Commission, Gene Patenting and Human Health, DP 68 (2004), [5.34].

[39] IP Australia, Submission P56, 4 November 2003; IP Australia, Submission P86, 16 April 2004.

[40] Commentators have made similar observations: see J Lahore, Patents, Trade Marks & Related Rights: Looseleaf Service (2001), [8025].

[41] IP Australia, Submission P56, 4 November 2003; IP Australia, Submission P86, 16 April 2004. See also Australian Law Reform Commission, Gene Patenting and Human Health, DP 68 (2004), Question 5–1.

[42] Department of Industry Tourism and Resources, Submission P97, 19 April 2004; F B Rice & Co, Submission P84, 16 April 2004; Queensland Government, Submission P103, 22 April 2004; Institute of Patent and Trade Mark Attorneys of Australia, Submission P106, 27 April 2004; Institute of Patent and Trade Mark Attorneys of Australia, Consultation, Melbourne, 31 March 2004.

[43] Department of Industry Tourism and Resources, Submission P97, 19 April 2004. See also F B Rice & Co, Submission P84, 16 April 2004; Queensland Government, Submission P103, 22 April 2004; Institute of Patent and Trade Mark Attorneys of Australia, Submission P106, 27 April 2004.

[44] Department of Industry Tourism and Resources, Submission P97, 19 April 2004; Institute of Patent and Trade Mark Attorneys of Australia, Submission P106, 27 April 2004.

[45]Patents Act 1990 (Cth) s 44(1).

[46]Patents Regulations 1991 (Cth) r 3.15. The Commissioner of Patents may also direct an applicant to file a request for examination within a shorter period and the applicant must comply with any such request within six months or the application will lapse: Patents Act 1990 (Cth) ss 44(2)–(4), 142(2)(a); Patents Regulations 1991 (Cth) r 3.16.

[47] IP Australia, Submission P56, 4 November 2003.

[48]Patents Act 1990 (Cth) s 47; Patents Regulations 1991 (Cth) r 3.20. The prescribed jurisdictions are Canada, New Zealand, the United States, and signatory countries to the European Patent Convention: Patents Regulations 1991 (Cth) r 3.21.

[49] Currently, a patent examiner is not required to consider all the criteria for patentability specified in s 18: see Ch 6 for more detail.

[50] ‘Prior art information’ and ‘prior art base’ are defined in the Patents Act 1990 (Cth) s 7, sch 1. See Ch 6.

[51] Ibid s 45(3); Patents Regulations 1991 (Cth) r 3.17A.

[52]Patents Act 1990 (Cth) s 45(1); Patents Regulations 1991 (Cth) r 3.18.

[53]Patents Act 1990 (Cth) s 142(2)(e); Patents Regulations 1991 (Cth) r 13.4.

[54]Patents Act 1990 (Cth) s 49(5), (7).

[55] J Lahore, Patents, Trade Marks & Related Rights: Looseleaf Service (2001), [8180]. There have been only four or five such refusals between 1991 and 2003: IP Australia, Submission P56, 4 November 2003.

[56]Patents Regulations 1991 (Cth) r 13.5.

[57]Patents Act 1990 (Cth) ss 54, 55; Patents Regulations 1991 (Cth) r 4.2.

[58]Patents Act 1990 (Cth) s 54(1). Certain information may be prohibited from being disclosed to the public under the Patents Act, even after examination and acceptance of a patent application: Patents Act 1990 (Cth) ss 147, 152, 173, 174.

[59]Patents Act 1990 (Cth) s 53; Patents Regulations 1991 (Cth) r 4.1. See also IP Australia, Submission P56, 4 November 2003.

[60]Patents Act 1990 (Cth) s 61; Patents Regulations 1991 (Cth) r 6.2. As a matter of practice, a standard patent is typically sealed approximately four months after acceptance of the application has been advertised in the Official Journal, unless the application is opposed: IP Australia, Submission P56, 4 November 2003.