27 August 2019

The peculiarities of patenting technical solutions in Australia and New Zealand

For many people, such countries as Australia and New Zealand are associated with very far abroad. However, these countries are quite popular for patenting. This article is devoted to the peculiarities of patenting technical solutions in Australia and New Zealand.

To begin with, it is necessary to consider the subtleties and nuances of patenting in Australia.

The Patents Act 1990 is the main legislative document in the field of the patent law in Australia.  A patent granted by the Australian Patent Office ensures temporary defence to those, who have succeeded in the creation of a useful technology, device, substance, process or method.  Thus, according to the regulatory documents of Australia, the patent defence can be granted to a wide range of inventions. In addition to traditional inventions (such as apparatus and mechanical devices), such solutions as: computer inventions, business methods (a method directly connected with the physical form or device to create a useful product), biological inventions (for example, the living organisms modified in a genotypic or phenotypic way, isolated polypeptides and proteins), microorganisms and other biological materials are subject to patenting.

However, there are also limitations in patenting. In particular, in accordance with the patent legislation of Australia, a human being or a biological process, artistic creation, mathematical models, plans, schemes and purely mental processes cannot be patented.

In accordance with the Patents Act 1990, an inventor may file an application for two different patent types: a standard patent for an invention and a patent for an innovation. 

A standard patent ensures a long-term defence and control over the invention. It lasts up to 20 years from the date of filing the application (or up to 25 years for pharmaceutical compositions). The invention claimed in the standard patent must be new, it must have an inventive step and it must be industrially applicable. These criteria are standard for the majority of the countries in the world. One of the main differences in the consideration of the application in Australia at a substantive examination stage is that the whole process of the substantive examination should take place within 12 months, during which an unlimited number of requests can be sent to the applicant, in response to which the applicant must submit his argument. If within the above period the applicant fails to persuade the examiner that the decision claimed by him is patentable, he also has a possibility of carrying out a re-examination, subject to the payment of a prescribed fee.

The disadvantage of the standard patent is long carrying out the examination. In order to speed up and stimulate applicants, a patent for innovations has been introduced. The patent for innovations is in effect within up to eight years and it is designed to defend the inventions that do not comply with the inventive step required by the standard patents. This is a relatively quick and inexpensive way to obtain defence for a new device, substance, method or process.

The patent for innovations requires an innovative step, i.e. novelty, not an inventive step. The innovative step exists, when the invention differs from what has been previously known, and this difference makes a significant contribution to the work of the invention. The patent for innovations defends a gradual promotion of the current technologies, rather than being an innovative invention.

The patent for innovations is usually granted within a month after the submission of a complete set of the documents with respect to the application. No substantive examination is carried out with respect to the innovation patent. The patent for innovations is legally effective only if it has been considered by the Australian Patent Office, it has been recognized as complying with the requirements of the Patents Act 1990 and it has been certified. The examination of the patent for innovations will be carried out only at the request of the applicant, a third party or if the Office’s examiner thinks to study the patent. The patent holder is not obliged to pay for the examination, until it is requested by the third party or the examiner. If the examination has been requested, it must be carried out within 6 months.

By its essence, the innovation patent is an equivalent to a patent for a utility model.

In addition to the standard and innovative application for a patent, the patent legislation of Australia provides the applicants with a possibility to file a preliminary application. Before filing an application for any patent, you may file a preliminary application. The preliminary applications set a priority date, which is convenient, if you need to prove that you are the first to come up with a new invention. This is an inexpensive way to declare your intention to file a complete application for a patent in the future. However, filing the preliminary application, in fact, does not represent the patent defence.

To request the priority date for the preliminary application, you must file an application for a patent (standard or innovation) or file a PCT application within 12 months after filing the preliminary application.

The preliminary application will also give the necessary time to determine whether such invention is worth the time, money and efforts spared in connection with filing the application for a patent. It is also cheaper to file a preliminary application than an application for a standard or innovative patent.

Some details of the preliminary application, such as a name of the invention and a name of the applicant, will be published in the Australian Official Journal of Patents. However, no technical or scientific details of the claimed solution will be disclosed.

Now, let us consider the possibilities of patenting technical solutions in New Zealand.

Until recently, a local check for the compliance of the claimed solution with the established patentability criteria has been carried out in New Zealand. Currently, a generally accepted check for the compliance of the claimed solution based on the state of the art known worldwide is carried out in New Zealand.

As in many countries around the world, the patent legislation of New Zealand has a number of the solutions that cannot be patented as an invention. Such solutions include computer programs, human beings and the biological processes of their formation, the methods of treating human beings in a surgical or therapeutic way, the methods of diagnosis practiced on human beings, plant varieties. In all other issues, the consideration of the application is carried out in a manner similar to the procedures established in the majority of the countries of the world.

In New Zealand, as in Australia, it is possible to file a preliminary application in addition to a standard application for an invention. The preliminary application describes the invention generally, often in less detail than the complete application. The preliminary application itself is not sufficient to obtain a patent – it is also necessary to submit the complete application in the future.

You may file the preliminary application, if your invention is at an early development stage and you want to “win” more time for the research and development. The advantage is that the date of filing the preliminary application may be the date of the beginning of your patent effect. When you file the preliminary application, it will be checked for the compliance with the legislation of New Zealand. The preliminary application must include a name of the invention and a description of the invention. This will normally include a broad definition of the invention (all its essential elements and how they are interrelated) and a sufficiently detailed description to enable the skilled person to determine whether it is industrially applicable. Drawings are often a part of the preliminary application, as they are a way of demonstrating the invention and the principles of its work.

Thus, the consideration of applications for inventions in Australia and New Zealand is not very different from the consideration of applications in the majority of the countries of the world, but they have their own peculiarities.