A standard patent application is the one that can become an enforceable patent.
IP Australia examines it, and if it succeeds you get a monopoly over your invention for up to 20 years.
For many applicants it's the third step, after a provisional and often a PCT application. It can also be your first filing if you're in a hurry.
Standard patent applications in Australia
“Warren has extensive knowledge of the Australian and New Zealand patent system. He was able to effectively compare and contrast these systems with other patent systems and determine the best patent strategy for our company and then proceed to the details of actually filing the patent. In addition, he was able to advise us on ways to reduce costs while simultaneously achieving our IP goals.”
- Sunil Pinnamaneni
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
Key facts
| Term | Up to 20 years from the complete application's filing date |
|---|---|
| Examination | Must be requested |
| Examination request deadline | Within 5 years of filing, or 2 months of IP Australia's direction, whichever is earlier |
| Acceptance deadline | 12 months from the first examination report (non-extendible) |
| Opposition window | 3 months from advertisement of acceptance |
| Renewal fees | Annually from the 4th anniversary of filing |
| Publication | 18 months from priority date |
Four ways to a standard application
From an Australian provisional. File the complete application within twelve months of the provisional and claim its priority date. This is the usual route when Australia is your main market.
Through the PCT national phase. If you filed a PCT application, you enter the Australian national phase within thirty-one months of your earliest priority date. This is how many overseas applicants arrive.
As a convention application. If you filed first in another country, you can file directly in Australia within twelve months of that filing and claim its priority date, skipping the PCT.
As a first filing. No earlier priority claim at all. Uncommon, because you give up the cheaper runway a provisional provides, but sometimes right if there has been a public disclosure or enforcement is urgent.
Innovation patents no longer exist
IP Australia stopped accepting new innovation patent applications on 25 August 2021. Existing ones remain in force until they expire, with the last running out by August 2029.
If you've found guidance recommending an innovation patent as a fast, cheap way to get enforceable rights, that guidance is out of date. The standard patent is now the only route to a patent in Australia. A good deal of the material still circulating online predates the phase-out, so it's worth checking the date on anything you read.
How examination works
You have to ask for it
Nothing happens until you request examination. You can request any time within five years of the complete application's filing date, but in practice IP Australia forces the issue by issuing a direction to request examination, which gives you two months to comply. Ignore their direction and your application lapses.
You can also request examination at filing. This can be considered if you need granted rights quickly (or if your patent attorney charges extra for a separate examination request), though most applicants prefer to keep the application pending, partly because competitors can't tell what scope you'll end up with while it's still in examination.
Then you wait
A first report usually issues twelve to eighteen months after you request, varying by technology field. Expedited examination is possible with no additional official fee, if IP Australia accepts your justification for it. Commercial reasons that work include potential unauthorised copying, or an investment round contingent on progress.
Then the clock starts
Unlike many other jurisdictions, Australia does not set a deadline for responding to the examination report.
Instead, IP Australia sets a deadline for securing acceptance of the application, being 12 months from the first report. In other words, all objections must be overcome by this deadline.
This 12-month period includes the examiner's consideration time and any further examination reports, so it’s worth getting on top of sooner rather than later.
→ Responding to patent objections
Acceptance, opposition, grant
Acceptance is advertised in the Australian Official Journal of Patents. Third parties then have three months to oppose. Most applications aren't opposed and proceed to grant a few months later.
What objections can you expect?
Almost every application receives at least one examination report with objections. The common objections include:
Lack of novelty: E.g. a single document published before your priority date discloses your claimed invention.
Lack of inventive step: No single document discloses the claimed invention, but getting there is considered obvious.
Manner of manufacture: This question is about whether your invention is even the type of thing that IP Australia will give a patent to, and is a common stumbling block for software and business methods.
Section 40 objections: Whether the specification discloses the invention clearly and completely enough, whether the best method was disclosed, and whether the claims are clear, succinct and supported by what was actually described. (This is one reason why it’s worth having your provisional application prepared properly.)
Frequently asked questions
How long does it take to get a standard patent in Australia?
Usually three to five years from filing the standard application. Factors include when you request examination, how many examination reports issue, and how quickly you respond to them. Expedited examination can speed things up considerably.
When must I request examination?
Within five years of the complete application's filing date, or within two months of a direction from IP Australia, whichever comes first. Most applicants are prompted by the direction.
Can I enforce my patent before it's granted?
No. You can't sue until grant. Once granted, it is possible to claim damages for infringement from the date your application was published, which is why the publication date matters.
Do I need a separate patent in every country?
Yes. Patents are territorial. An Australian patent gives you rights in Australia only. Protection elsewhere means applications in each country, usually via the PCT route.
What happens if someone opposes my application?
Oppositions are contested proceedings before IP Australia involving evidence and usually a hearing, and they add significant time and cost. They're uncommon, and the vast majority of accepted patent applications proceed to grant unopposed.
Can I still file an innovation patent?
No. New innovation patent applications haven't been accepted since 25 August 2021.
Talk it through
Whether you've got a provisional, entering the Australian national phase, or want to file a standard application as your first filing, book a complimentary call with me and we can discuss how to best proceed: