Applying for a patent

When should I apply for a patent?

If in the course of your work or research you believe that you have created intellectual property (IP), it is important to promptly protect the IP rights. Such protection is often achieved by applying for a patent. Any public disclosure of the IP prior to its protection will prevent patenting it.

How is a patent applied for?

The first step is to complete a Invention Disclosure form (IDF). Intellectual Property at the University is administered by the Intellectual Property Committee under the University of Sydney’s Intellectual Property Rule.

After it receives your IDF, Commercial Development and Industry Partnerships will organise a meeting with you to learn more about your work. We will then refer it to the Intellectual Property Committee for consideration.

How is a decision to file a patent application made?

The Intellectual Property Committee decides whether to protect the invention by filing a patent application. (Note: not all IP needs to be protected by a patent to be commercialised.)

What are the steps of the patenting process?

Step 1 – Applying at the Patent Office
The University will file a ’provisional application’ with the Patent Office. This is a written description of your invention and when filed establishes a ’priority date’. The application is kept secret by the Patent Office.

Step 2 – Filing the complete application
Within one year of filing the provisional application, a complete application must be filed in order to maintain the priority date. The complete application is based on the provisional application but can include details of any further unpublished results, developments and improvements to the invention. The complete application is usually filed under the Patent Cooperation Treaty (PCT). This treaty allows a single international application to be filed, allowing the applicant to apply for patents in designated countries 18 months later. The complete application includes a set of claims defining the scope of the protection sought for the invention. The monopoly granted under the patent will be determined by the wording of the claims. Once a complete application has been filed it cannot be changed and no new material can be added.

Step 3 – Protecting the invention in specific countries
To protect the invention in designated countries, the complete application needs to be filed in each country separately within 18 months of the PCT filing.

When will applications of my invention be published?
If the complete application is filed, the provisional and complete applications are published by the Patent Office 18 months after the priority date.

When will a patent be granted?
The patent office in any designated country may object to issuing a patent for the application for various reasons, such as obviousness or lack of novelty. If objections are successfully dealt with, the application is advertised to allow any opposition by third parties. If there are no objections, or where any such opposition is unsuccessful, the patent is granted. This is done in each country separately.

How long will a patent last?
The maximum duration of a patent is 20 years from the filing date of the application.