General Information about Patents

Owning the patent right to an invention gives one a monopoly over the manufacture and sale of the invention. These are rights that can be licensed to others, in return for royalties (or some other form of return). Given that JCU is neither in the business of manufacture nor sales, that is the usual practice here.

Any device, substance, method or process is patentable, so long as it:

  • is new – i.e. has not been publicly disclosed in any form, anywhere in the world;

  • involves an inventive step – i.e. it must not be obvious to someone with knowledge and experience in the technological field of the invention; and

  • is useful.

Anything fitting those criteria, with industrial application in the broadest sense (the legal term is “manner of manufacture”) is patentable. This includes computer programs (see below), methods of medical treatment and living organisms (such as transgenic plants). The sorts of innovation that cannot be patented include:

  • discoveries or scientific principles without application to a useful purpose;

  • mixtures of known components for use in food or medicine (without synergistic effect);

  • working directions for use of a known apparatus;

  • artistic creations;

  • mathematical methods;

  • plans, schemes or other purely mental processes.

The first step in obtaining a patent is to file a provisional application. This establishes the priority date for the invention. This must be followed, within 12 months, by filing:

  • an Australian standard patent application;

  • an international patent (Patent Co-operation Treaty or ‘PCT’) application; or

  • a patent application in one or more foreign countries.

A PCT application is a useful means of protecting an invention before taking the very expensive step of registering patents in specific countries, and is the usual option where some degree of international protection is desirable. The PCT allows a single international application to be filed in Australia – the national phase is deferred by up to 30 months from the priority date.

An Australian standard patent lasts for 20 years.

Approximate costs for initial filings (including Patent Office fees) are:

$4,000 - $7,000

provisional application

$15,000 - $18,000

PCT application

$5,000 - $30,000

national filings (including translation costs)

Renewal fees are also payable - these become dearer over time.

A patent monopoly is granted in return for a full written description of an invention (the patent “spec”). Such a description is required to ensure that other people are able to make a product or repeat a process once the patent period is over. A specialist in the particular technology must be able to repeat the process or reproduce the product from the directions given in the written description. With microorganisms this can be difficult to comply with, and special arrangements are available.

The primary source of general information about patents is IP Australia, the Commonwealth body that administers patents, trade marks and design rights. It is highly advisable that anyone who is thinking about taking out a patent explores their web site. For those who are particularly enthusiastic the Patent Manual (and especially volume 2) is more than instructive.

The Library’s Patent Guide also has a list of resources that are useful when searching for patents as well as links to patent offices around the world and journals that index patents.

Patents and Computer Software

Software is patentable if it includes a mode or manner of achieving an end result that is artificially created and has economic utility. In general the invention must be industrially applied. Software that is merely a procedure for solving a given type of mathematical problem is not patentable.

IP Australia has more information online.

See also the note in the local section on Copyright.

Patents and Microorganisms

The isolation and cultivation of naturally occurring micro-organisms which have some new use satisfy the requirement of intervention (i.e. goes beyond mere discovery) and hence are patentable. As IP Australia notes: "a claim to a biologically pure culture of the naturally occurring micro-organism without any specified ingredients is acceptable provided the micro-organism has a new use".

There are, though, complications with regard to micro-organism descriptions within a patent spec. The requirement for full description of a microorganism is satisfied if the microorganism is deposited with one of the recognised International Depository Authorities (IDAs) under the Budapest Treaty. If an invention then involves the use, modification or cultivation of the microorganism, and someone could not be expected to perform the invention without a sample of the microorganism, and the microorganism "is not reasonably available to a person skilled in the relevant art" in Australia, then full description can only be satisfied if there has been lodgement with an IDA.

Notes on microorganism patenting and details of deposits under the Budapest Treaty are available online via IP Australia.