Patent Applications & Patent Pending

What is a patent application?

A patent application is a legal document filed with a Patent Office. A patent examiner then reviews the application and decides whether to grant a patent. Once the application has been filed, products and/or processes covered by the application can be marked and/or marketed as ‘patent pending’.

What does ‘patent pending’ mean?

‘Patent pending’ means a patent has been applied for.

‘Patent pending’ and similar markings serve to put would-be imitators on notice of the patent application. The patent pending marking may well be enough to deter the copycats, but if you do need to enforce your patent, the court will take the patent pending marking into account when assessing the penalties to be paid by the imitator. More on patent marking.

Types of patent application

An Australian provisional patent application is a common starting point for Australian innovators. It lasts for 12 months and serves as a place marker to reserve the innovator’s priority to patent their invention.

At the end of the 12 months, it is time to file a non-provisional patent application such as an international patent application (aka PCT application) or an Australian standard patent application. These are the international and Australian equivalents of a US utility patent application.

Australian design registrations are the Australian equivalent of US design patents and have a separate application process.

Content of a patent application

A patent application typically includes a ‘patent specification’ and a ‘patent request’. The patent specification is a combination of text and (optionally) figures that describes the idea and defines the patent coverage. The patent request identifies the owner of the application (the ‘applicant’), the inventors, the type of application and any formally related patent applications.

The patent application process

The patenting process typically includes a number of patent applications filed at different times and formally linked together – for example, an international application may ‘claim priority’ from an earlier provisional application. The set of related patents and patent applications is referred to as a ‘patent family’.

It often takes four years or more to secure a patent.

A patent application can be directed to more than one invention, although this eventually leads to objections from patent examiners. The objections can be overcome by deleting claims (definitions of coverage) to all but one of the inventions and (optionally) the patent family can be extended by filing further related patent applications to these claims.

If the inventions are sufficiently related, the inclusion of multiple inventions in a single application advantageously defers and minimises costs by deferring the expense of filing the extra patent applications until later on in the process. Following this approach, it could be well over four years before the last patent in the family is granted.

Until the last patent in the family is granted, you should continue to advertise your product or process as ‘patent pending’.