News

In my practice, I routinely receive calls from inventors claiming to have the next big thing, only to learn that they have self-filed a provisional specification without any professional advice, and are now seeking to file a complete application based on their prepared specification.

It often transpires that that they will still need to pay for a professionally prepared specification, and that their original specification may not be sufficient to even afford a priority date.

A common discussion with clients is sufficiency of description and best mode. Many inventors believe that by not specifying all the details, they will obtain a broader patent. Nothing can be further from the truth. By not providing appropriate details, a patent may be held invalid with all rights relinquished.

By way of example, two BlueScope Steel Limited patents were recently found invalid under Australia’s increasingly complex best method requirement [BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117].

This highlights that “best method” in Australia would include consideration of:

• disclosure of each essential element for performing the invention.
• a skilled person can arrive at the best method without ingenuity or undue experimentation, whereby there is deficiency if the skilled person is left to make a choice or is in doubt and that choice or uncertainty affects the performance of the method.
• specific details of the method that would be well-known and understood by the skilled person need not be disclosed.

I fully support a person’s right to self-file, but highly recommend getting appropriate professional advice on unfamiliar aspects. Proceeding on an incorrect assumption that your self-filed application is securing an appropriate priority date, can be dangerous or detrimental to future business plans.

The cost of professionally preparing a patent specification typically ranges between $3,000 and $5,000. Many businesses pay more than this for insurance over a couple of years. If you believe your invention can make significant returns, costs for obtaining proper IP protection should be similarly evaluated as a business decision.