Patent Searches, Drafting, Filing & Prosecution

Patent Searches, Drafting, Filing & Prosecution

Patents are a valuable monopoly right that can provide a business with a vital advantage in what is already a competitive marketplace.

It raises the barrier to entry and provides the patent holder with a head start in its area of technology. The area of patent law is complex and what can or cannot be patented is ever changing. For that reason understanding the options and getting the resulting strategy right at the outset is imperative.

Led by Nicholas Milne, our patent team at Actuate Patents have the expertise and commercial nous to assist you and your business to precisely navigate through the patent system here in Australia and overseas.

Obtaining a granted patent adds value to your invention and your business in the following ways:

  • benefit from the financial rewards resulting from the commercialisation of the patented invention which you have a monopoly.
  • you can threaten and, if required, bring patent infringement proceedings against an infringer stopping their conduct and recover damages or their profit
  • holding a patent for an invention, even in its early stages of commercialisation, improves your bargaining position when negotiating with potential commercial partners, investors or licensees
  • a patent acts as a valuable notice of your claimed rights to the invention, deterring would-be infringers - prevention is better than cure.
  • a patent protects your investment of time and resources in the research and development of your invention. Without this type of government granted monopoly it is near impossible to prevent competitors copying the functionality of your product or process.
  • a patent is an asset of your business that can be valued as part of your overall business value, licensed or sold.

A typical starting point when seeking patent protection is to first file a provisional patent application. A provisional application does not provide you with an enforceable patent right but instead first stakes your claim to your invention for a 12 month period. Put another way, it puts you in the queue ahead of others to that invention. That 12 month period can then be used to determine the commercial feasibility of your invention and take it to market as “patent pending”.

A decision is then needed to made whether to progress the provisional patent application to either or both a standard patent and/or innovation. It should be noted that, in Australia, the innovation patent is being phased out by the government. To extend your patent protection beyond Australia into other commercial markets of interest a separate application process is required. This is commonly done by filing a “PCT application” - a consolidated international application under the Patent Cooperation Treaty which initially positions your patent for protection in all member countries (of which there are currently 148).

How We Can Help You

Our patent team’s capabilities include:

  • Australian and international patent protection strategy & advice
  • patentability searches & advice
  • preparing and drafting patent specifications
  • patent application filing in Australia & internationally
  • responding to the Patents Office in support of patent grant
  • prosecuting patent applications
  • patent watch services
  • Australian and international patent portfolio management
  • patent infringement advice
  • Australian and international patent portfolio management
  • patent audits & due diligence
  • IP Australia Patent Office opposition proceedings
  • Assisting Actuate IP’s legal team in preparing commercial agreements, including licensing, related to commercialisation of patents
  • Assisting Actuate IP’s legal team in enforcing and defending patent infringement proceedings

Key Team Members

Nicholas Milne

Nicholas leads Actuate Patent's patent team and manages patent portfolios for his clients domestically and internationally.

Read full bio Email Nicholas

Nicholas Milne

Principal | Patent Attorney @ Actuate Patents

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