New IP laws set to penalise “quick and dirty” patent applications

A patent expert has issued some advice about Australia’s new intellectual property and patenting laws, urging start-ups to refrain from rushing into a “quick and dirty” patent application.

Michael Caine, a partner at IP practice Davies Collison Cave, says the new laws have set a higher standard with regard to patent applications.

Caine is referring to the Intellectual Property Laws Amendment (Raising the Bar) Act, passed in April, which is designed to offer entrepreneurs greater IP protection.

In light of the new laws, Caine says patent applications will now require more time and effort, so start-ups need to get them right from the start.

“[It’s about] making sure the job is done properly from the outset. Being able to file a quick and dirty patent application is probably not the way to go,” Caine told StartupSmart.

“There is more incentive now to go and get the job done properly.”

According to Caine, the application process will change depending on the nature of the invention and the aspirations of the patent applicant.

“If an applicant comes to us and they’re asking to get an international patent, then already we would be doing a patent application that would meet US, European or Japanese requirements,” Caine says.

“For the backyard inventor – for the small business that really only has an interest in Australia – those sorts of applicants are more likely to go off and do their own thing [because it requires a] smaller investment from them.”

“They can do it themselves and send it off to the patent office.”

Caine says patent applicants should be wary of filing an innovation patent, as this leaves them with fewer options if things change.

“We would tell them to file a provisional application and then 12 months later file an innovation patent. That keeps it open for them,” he says.

“With an innovation patent, it’s published straight away. Once it’s published, there’s only so much we can do to recover the ground for them if they want to get protection overseas or something bigger than they initially thought.”

Caine points out the biggest cost associated with a patent is drafting it.

“The cost of filing is not much compared to the cost of drafting… That extra fee about how you file it is neither here nor there,” he says.

According to Caine, it costs about $110 for a provisional filing and $180 for an innovation patent, while the cost of drafting a patent could cost around $5,000.

“If these patent applicants are getting advice, they might do far more sensible things with their inventions. Get some good advice because the requirements have been raised,” he says.