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I think I've invented something: do I need a patent?

Justin Fung, Avant Law - Partner, Head of Commercial & Corporate | General Manager

A registered patent is a form of intellectual property, that is, an intangible creation o fthe mind which is nevertheless recognised by the law as a property asset. Patents exist to provide inventors of devices, substances, methods or processes with a statutory monopoly (exclusive commercial rights) for a set number of years (most commonly 20 years). They should aim to encourage innovation and ensure that inventions are published and can be used by everyone for the benefit of society as a whole at the end of the patent period.  

Many industries, including the pharmaceutical industry, are founded on patents. When drugs come off patent, generic and biosimilar manufacturers can start to produce competing drugs made according to the same formulas. This provides consumers with access to the same treatments at lower prices than when the drug was under patent.

Filing a patent application

To obtain patent protection, an invention will need to have been kept a secret (its' novelty' will need to be preserved). This is discussed further below. Patent searches also need to reveal no other similar technology (there's no 'prior art').

If you have invented something that is potentially commercially valuable, consider having a patent attorney file a provisional application. This will give you priority and up to 12 months to decide whether to file a full application.

To obtain protection in other countries you need to file in those countries. The World Intellectual Property Organisation (WIPO) in Geneva administers the Patent Cooperation Treaty for 152 countries. This facilitates the process if you want to get protection in all those countries (including Australia).

Maintaining novelty

Before you file the patent, make sure you keep your invention a secret. It's essential to make sure anyone with whom you share the invention signs a formal non-disclosure agreement first. This will preserve the novelty of your invention if you do decide to apply for a patent.

Alternatives to patent protection

If you decide not to apply for a patent, you may still be able commercialise your invention, but you may wish to see if you can keep it as a trade secret. This of course will not protect you from industrial espionage, stop someone else from reverse engineering your invention (if it is a product) or stop someone else from independently inventing and registering their own patent for it.  

Finally, maybe you would consider openly publishing the details of your invention - this will mean no one can get a patent for it and everyone would be free to use it for their own benefit

We can help you

If you have any questions, or would like more information about how we can assist you or your practice, please call 1800 867 113, or to organise a confidential discussion at a time that suits you, please click here 

About the author

Justin Fung

Justin Fung is a lawyer and the Head of Commercial and Corporate in our Avant Law team. Justin has over 15 years’ experience advising in commercial, corporate, risk, compliance, governance, regulatory enforcement and dispute resolution and advises clients in the private and public sectors. He was previously General Counsel of a national allied health group of companies and held Group and Divisional Head of Legal roles in a major ASX-listed health company, whose operations covered medical and dental centres, allied health, pathology, diagnostic imaging, assisted reproductive technologies, day surgeries and hospitals. Prior to these in-house legal roles, Justin was an Executive Counsel with the global law firm Herbert Smith Freehills where he practiced for over 10 years.


Disclaimers

The information in this article does not constitute legal advice or other professional advice and should not be relied upon as such. It is intended only to provide a summary and general overview on matters of interest and it is not intended to be comprehensive. You should seek legal or other professional advice before acting or relying on any of this content. The information in this article is current to 15 July 2022.  Legal services are provided by Avant Law.  Liability limited by a scheme approved under Professional Standards Legislation. Legal practitioners employed by Avant Law Pty Limited are members of the scheme. © Avant Mutual Group Limited 2024

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