What is a patent?

Patents are a species of intellectual property that protect new and useful inventions. They are a grant by the State of the right to exclude others from making, using, selling, offering for sale or importing a patented invention in the country in which the patent is issued for a period of 20 years.

Patents exist to promote invention, innovation and the financing of invention and innovation. In this sense, they represent a bargain between the inventor and the State. In exchange for, and to encourage the disclosure of the workings of an invention to the public, the State offers inventors a 20 year monopoly to exploit the invention. That is, in exchange for disclosing the invention, the inventor gets to use the invention (if all necessary regulatory requirements are met) to the exclusion of all others for a period of 20 years. Patent law operates on the assumption that the monopoly rights on offer are a sufficient reward to induce the development of new technologies at a faster rate than what would otherwise occur.

In most countries, to be patentable, an invention must be new, novel, inventive (or non-obvious), useful and fall within the recognised categories of patent-eligible subject matter. In Australia, to be patentable, an invention must be novel and involve an inventive step when compared with the prior art as it existed at the priority date, which is usually the date the patent application was filed. The invention must also be useful and a "manner of manufacture" within the meaning of section 6 of the Statute of Monopolies and not have been secretly used before the priority date.

The novelty and inventive step requirements are the key aspects of patentability that are the focus of the Peer-to-Patent Australia project to improve the quality of issued patents in Australia.

How does an inventor obtain a patent?

An inventor obtains a patent after filing a patent application with the patent office. The patent office examines the application to make sure that the invention meets the requirements of patentability. Patent examination requires that the examiner review the "prior art" in the technical field of the invention. After reviewing the prior art in the field, if the examiner is convinced that the invention is a patentable invention, the patent office will grant the applicant a patent.

While a patent cannot be enforced until granted, it provides a warning to potential infringers that if the patent is issued, they may be liable for damages if they infringe the patent by using the invention.

What is prior art?

Prior art is all information that has been made available to the public before the priority date, either by publication in a document or by the doing of an act in public. Whether an invention meets the requirements of novelty and inventive step is determined by comparing the invention with the prior art as it existed at the priority date. Information which has not been publicly disclosed, but has been kept secret is not prior art. Examples of prior art include publications in newspapers, books, journals and magazines, products sold or offered for sale, other patents or patent applications that have been published, and public use of an invention (such as using a device in a place where someone other than the inventor could see the device being used).

What does it mean for an invention to be novel?

Patent protection for patents will only be granted in Australia for inventions that are novel. An invention will be novel where it has not been made public before the priority date, either by publication in a document or by the doing of an act in public. Where an invention is not novel when compared with the prior art, it is said to have been anticipated by that prior art.

What does it mean for an invention to involve an inventive step?

Patent protection for standard patents will only be granted in Australia for inventions that involve an inventive step. Determining whether an invention involves an inventive step requires a determination as to whether the invention would have been obvious to a person skilled in the relevant art at the priority date. If the invention would not have been obvious to a person skilled in the relevant art at the priority date, it will be deemed to involve an inventive step.

What is a priority date?

The priority date is that date at which the claimed invention is compared with the prior art base to determine whether it is novel and involves an inventive step. Usually the priority date is the date upon which the patent application is filed.

What is a patent specification comprised of?

A patent specification contains an abstract, which is a brief summary of the invention, a detailed description of the invention, and concludes with claims.

Claims define the scope of protection granted by the patent, or in other words, what the patent covers. In order to prove an infringement, the patentee must establish that the accused infringer has taken all of the elements of at least one of the patent claims. Claims are often arranged in a hierarchy of independent and dependent claims.

Doesn't big business stand to lose from this process and won't it resist having its patent applications scrutinised?

No. Even the biggest users of the patent system recognise the need for reform and improving the quality and reliability of issued patents. The advantage of Peer-to-Patent Australia, for big and small players alike, is the greater certainty that comes with improving the quality of issued patents.

Peer-to-Patent has generated considerable support internationally from big business. The recent pilot projects run in the United States had the backing of users of the patent system such as IBM, Microsoft, Hewlett-Packard, General Electric, Intel and Yahoo!, all of whom recognised potential of the project and put forward applications to be peer reviewed.

With the number of patent applications under review, won't the workload for participants be too great? Won't this serve as a disincentive to contribute to the process?

There is no need for participants to review all patent applications listed on the site. We ask only that participants review patent applications that fall within the particular areas of technology they have knowledge and expertise in.

Will the project overwhelm the patent examiners with prior art?

No. The project contains a filtering mechanism to sort through the prior art references it receives from contributors. Peer-to-Patent Australia will forward at most the top 10 most relevant prior art references, as judged by the community of participants, to IP Australia at the end of the period during which the patent application in question is under review.

What is the incentive for people to participate in the project?

The primary incentive for people to participate is the opportunity to be a part of an initiative that is designed to improve the quality of issued patents in a way that promotes the public interest. That people with a passion will participate in something they believe in can be seen in the success of many open source software projects.

Secondly, self-interest will motive participation. For many, there will be a desire to do what they can to ensure that patents are not granted in respect of unpatentable subject matter in their area of expertise. There is a broad array of people who will contribute, including scientists, IT professionals, business professionals, independent inventors, patent attorneys and lawyers, students and hobbyists.

How does the project promote the public interest?

If successful, the project will promote the public interest by improving the quality of issued patents. The public only benefits when monopoly rights are granted for inventions that truly represent a novel and inventive advance over the existing state of the art. The benefit to innovators is that improving the quality of issued patents leads to clearer patent landscapes and reduces the uncertainty surrounding freedom to operate.

What is the benefit to patent applicants?

The benefit to participating applicants is that their applications will undergo a more rigorous examination against the strictures of novelty and inventiveness and are likely to be more robust as a consequence.

The more robust a patent, the more valuable it is and the less likely it is to be challenged, which is a benefit that represents significant cost savings over time to consumers, patent holders and the public at large. More robust patents are less likely to be litigated or disputed in licensing discussions. As a consequence, the marketplace for such inventions will be more efficient, with time and money not being wasted on ill-conceived litigation. In addition, the identification and elimination of weak claims early in the examination process ultimately saves the applicant money by avoiding the expensive process of pursuing or enforcing non-meritorious patent claims. Finally, it is anticipated that open peer review will encourage applicants to file better constructed and clearer applications and lower the incentive for those who might seek to file low quality applications.

Will this process harm smaller or independent inventors?

No. All participating patent applications and applicants are treated equally regardless of who the applicant is.

Will the peer review process delay patent examination and patent issuance?

The Peer-to-Patent Australia review process will not likely delay patent examination and patent issuance. We will endeavour to ensure that prior art references will be forwarded to patent examiners before substantive patent examination begins. In any event, it is not anticipated that IP Australia would delay examination of a patent application simply because a patent application was undergoing peer review.

Will patents issued after the review process enjoy an enhanced presumption of validity?

Granted patents that undergo peer review as part of the Peer-to-Patent Australia review process will be treated like any other issued patents. While it is hoped that patents that have undergone peer review will be strong and valid patents as the result of the best prior art references having already been appropriately considered, the fact that a patent has undergone peer review will not be a relevant consideration in determining its validity.

Where do the patent applications on this website come from?

IP Australia provides the patent applications that have been posted on the website. The website requires patent applications to be in a text-based format. It has been necessary for IP Australia to perform an optical character recognition OCR process on the authoritative version of each patent application to produce a text-based version which is compatible with the functionality of the website. Both the text-based version and the authoritative version (which is in PDF format) of each patent application are posted on the website. However, the text-based version may contain unintended errors/artifacts due to imperfections in the OCR process.