How to hurdle Australia’s tough new patent laws

My patent experience

Melbourne start-up firm Calibre8 applied for a patent after releasing the Scrubba wash bag to the market earlier this year.

The patent application was filed to protect the laundry invention, while a second patent application has also been filed to protect the unique manufacturing process for applying a flexible washboard to the inside of the Scrubba wash bag.

Ashley Newland, managing director of Calibre8, is behind the business venture and is also a registered patent attorney.

He says others hoping to secure a patent should seek expert advice early in the process – and definitely before disclosing the invention to anyone.

IP Australia recommends that businesses engage a patent attorney to guide them through the process.

“Being an Australian patent attorney myself, the process was not overly complex, but it was time intensive drafting the patent applications to cover a broad range of possible embodiments of the invention,” Newland admits.

“It is worth spending the time getting the patent application right early on as there are limited opportunities to amend the application later and it may be a major part of your business for the next 20 years.”

“Our belief is that the ‘Raising the Bar’ law will bring the Australian patent system more in to line with international systems and rights obtained in Australia will more accurately reflect those that will be achievable internationally.”

Protection under another name

If you haven’t been successful in securing a patent, all is not lost, according to Summerfield. Entrepreneurs could consider an innovation patent, which is a lower-tier safeguard.

Unique to Australia, the innovation patent can offer some protection, Summerfield says.

However, there is government discussion around abolishing it, which he says would be a shame.

“I think there’s a role for this lower level protection when an SME isn’t perhaps involved in leading edge research and development but nonetheless they’re still developing worthy products that are worth some protection in the local market,” Summerfield says.

There were 1,600 innovation patents applications in Australia in 2011, 65% of which were filed by Australian companies and the rest by overseas companies, Summerfield says.

The six-step patent application process

Search patent databases to be sure your invention meets the criteria for a patent.

Decide what type of patent best suits your invention. These include a standard, innovation or PCT patent application.

Examination is mandatory before a standard patent can be granted and must be requested by the applicant. An innovation patent, on the other hand, will be examined if required.

Acceptance and the granting of an innovation patent will occur if the applicant has met all the requirements and is then published in the official journal.