Claims and Best Method
An application for a standard application must be accompanied by a "complete" specification. A complete specification differs from a provisional specification in that it must include one or more claims. The claims set out features of the invention for which monopoly is claimed.
Each claim is a single sentence that sets out the essential features. A claim is only infringed if all of the features specified by that claim are found in the allegedly infringing product, system or method etc.
It is a requirement of Australian law that a complete specification must describe the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, including the best method known to the applicant of performing the invention, as at the filing date. If the best method known at the time is not disclosed, then any resulting patent will be invalid.
A complete specification must also be suitable for publication and, accordingly, any drawings need to meet specific requirements. This usually requires that the drawings be drawn by a professional draughtsman.
Examination
A standard patent application must be examined before it can be granted. Examination only occurs after the applicant requests examination. If no request for examination is filed within 5 years of the filing date then the application will lapse. The Patent Office may also direct the applicant to request examination, in which case the applicant must request examination within 2 months of the date of the direction or the application will lapse. A direction usually issues about 3 to 4 years after the priority date.
After examination has been requested the Patent Office will conduct a search of the prior art and consider the invention against the prior art found. The examiner will consider the application for internal consistency and whether the invention as claimed is both novel and inventive over the prior art. If objections are raised an examiner's report will issue. The applicant has 12 months from issue of the first report to overcome the objections and have the application accepted. The 12 month period cannot be extended as of right.
Objections raised by an examiner may be overcome by argument or amendment of the specification or both. It is possible to file as many responses as desired within the 12 month period.
If the objections cannot be overcome within this period the application will lapse. However, a "divisional" application may be filed before lapsing to maintain any patent rights.
Divisionals
A divisional application is usually made where two or more inventions are disclosed in a single application. A patent can only be granted for a single invention and so any extra inventions are split out and made the subject of separate applications. A divisional application is an application that claims matter disclosed in an earlier application and has the benefit of the earlier application's priority date(s). The effective filing date insofar as its maximum duration and when renewal fees are due is calculated from the filing date of the earlier application, not its actual filing date. A divisional application can only be filed whilst the earlier application is alive and has not been granted.
Acceptance and Grant
If no objections are raised during examination or any objections are overcome the application is accepted and published as accepted in an official journal. Third parties have three months from the date of publication of acceptance to oppose the grant of the patent. Opposition is relatively rare and if no opposition is filed, the application proceeds to grant, subject to payment of an acceptance fee. The acceptance fee is payable before the end of the 3 month opposition period. The application lapses if the acceptance fee is not paid.
Renewals
For standard applications and patents renewal fees are first due four years from the filing date and then every year afterwards.