- Who does what in the Australian patent system
- The priority date and the 12-month provisional window
- From filing to grant: the process and its deadlines
- An Australian patent stops at the border
- Where founders usually lose value: disclosure and ownership
- Where a patent attorney and an IP lawyer change the outcome
- The date that drives everything: your priority date
A patent is a government-granted monopoly. For a limited time it lets you stop other people in Australia from making, using, selling or importing the invention described in your patent, even if they worked it out independently. In exchange, you must publish exactly how the invention works, so that when the patent expires anyone can build on it. That trade is the whole point of the system: a temporary exclusive right, given in return for adding to the public stock of technical knowledge.
For a startup founder, patents usually become relevant at a specific moment. You have built something new, you are about to show it to an investor, a manufacturer or a beta customer, and you suddenly realise that showing it might give away the only thing that makes you valuable. From that point the system runs on dates rather than on how good the idea is. This article walks through how the Australian patent scheme actually operates: who the players are, what an invention needs to qualify, the sequence of filings and deadlines, how far an Australian patent reaches, and where founders typically lose value along the way.
Who does what in the Australian patent system
A patent application passes through the hands of four main actors, and knowing which one does what saves a lot of confusion:
- IP Australia: the federal agency that administers the patent system. It receives applications, examines them, grants patents and keeps the public register. It does not advise you on whether to file.
- Registered patent attorney: the specialist who prepares the patent specification and prosecutes the application through examination. In Australia, specifications must be prepared by a registered patent attorney, or by someone working under a registered patent attorney's supervision, and the work cannot be outsourced to an unregistered person. Many patent attorneys are also lawyers.
- IP and commercial lawyer: handles the strategy around the patent, including what to protect, ownership and confidentiality arrangements, licensing, and enforcement or defence if the dispute reaches court.
- The Federal Court: where infringement and validity disputes are ultimately decided, including appeals to the Full Court and the High Court on points of principle.
The distinction between attorney and lawyer matters because startups often assume one "patent lawyer" does everything. In practice the drafting and examination work is the patent attorney's job, and the lawyer's job is to make sure the patent fits the company's contracts, ownership structure and commercial plans.
What an invention needs to qualify
For a standard patent, s 18 of the Patents Act 1990 (Cth) (the Act) sets out four cumulative requirements, and the invention, as claimed, must satisfy each of them or the patent is invalid:
- New: under s 7 of the Act, an invention is not novel if it has been made publicly available anywhere in the world in a single document or through a single act. That includes a website, a YouTube video, a pitch at a demo day, a crowdfunding campaign, or a product sold at a trade show. IP Australia puts it bluntly: if your invention has already been shared publicly before you apply, it is not eligible for protection.
- Inventive step: an invention fails this requirement if it would have been obvious to a person skilled in the relevant field, having regard to the common general knowledge. Combining two well-known parts in an obvious way is not enough; the step must not be a routine development.
- Useful: under s 7A, the complete specification must disclose a specific, substantial and credible use for the invention. A vague "this could be used for something" does not satisfy it.
The manner of manufacture test, and why software is tricky
The first requirement, manner of manufacture, comes from s 6 of the Statute of Monopolies and is where Australian patent law has its sharpest edges. The modern test excludes abstract schemes, pure business methods and mere ideas, because they are not considered to involve the kind of technical advance the patent system exists to reward.
The Full Federal Court applied exactly that logic in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, striking down claims to a computer-implemented system for assessing qualifications, and the High Court confirmed the approach in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29. The practical lesson for founders is that software can be patented in Australia, but only where the invention makes a genuine technical contribution, and the drafting needs to frame the claims around that contribution rather than around the business outcome. A pricing model, a marketing concept or a general idea on its own will not survive. If your valuable asset is a brand name or logo, that is trade mark territory, not patent territory.
The priority date and the 12-month provisional window
Every deadline in the patent system hangs off one date: the priority date. That is the date against which novelty and inventive step are judged, and it is normally the date you first file, not the date you invented the thing. Filing early, even before the product is finished, locks in a priority date while you keep developing.
Most startups use a provisional application to secure that date cheaply. A provisional application costs a minimum of $100 to file with IP Australia, requires a specification that describes the invention, and does two important things: it establishes your priority date, and it gives you 12 months to decide whether the invention is worth full protection. It does not, despite the name, give you any patent protection. Under s 38 of the Act you must file one or more complete applications within the prescribed period, and if you do not, the provisional application lapses under s 142 and your priority date is lost.
That 12-month window is the engine room of startup patent strategy. It is the time to test the market, finish the prototype, talk to manufacturers under confidentiality, and decide which countries matter. It is also a one-way door: the provisional spec is what your complete application can rely on, so a hastily written placeholder that fails to describe the real invention can leave you with a priority date for the wrong thing.
From filing to grant: the process and its deadlines
Once a complete application is on file, the process runs through four stages:
- Publication: your application is advertised in the Australian Official Journal of Patents and made searchable, in most cases around 18 months after the priority date. From that point the specification is public, so competitors can see what you are doing. That is the trade the system is built on, and it is one reason some founders prefer trade secrets for things that can be kept secret.
- Examination: examination does not happen automatically. You (or anyone else, once the application is published) can request it, and it must be requested within 5 years of the filing date or the application lapses. The examination fee is $550, and IP Australia aims to complete the examination within 12 months of the request. Expedited examination is available, in some cases taking around 8 weeks, which can matter if an investor is waiting or you need to enforce the patent soon.
- Acceptance: if the examiner is satisfied the invention meets the requirements, the application is accepted and advertised. If the examiner raises objections, you have 12 months to overcome them, and if you cannot, the application lapses. This is where claim drafting earns its keep: amendments are possible, but you cannot add new matter beyond what the specification disclosed, so the original specification sets the ceiling on what you can end up with.
- Grant and term: after acceptance, third parties have a limited window to oppose the grant. If nobody successfully opposes, the patent is granted, and the term of a standard patent is 20 years from the date of the patent under s 67. A granted patent needs annual renewal fees to stay in force; miss them and the patent ceases.
One structural fact worth knowing: Australia's second-tier innovation patent, which offered an 8-year term and a lower inventive threshold, was phased out, and no new innovation patent applications have been accepted since 26 August 2021. For a startup today, the standard patent is the real route.
An Australian patent stops at the border
Patents are territorial. A patent granted in Australia gives you rights in Australia, and only in Australia. There is no such thing as a single worldwide patent.
For overseas protection the standard mechanism is the Patent Cooperation Treaty (the PCT), administered by WIPO and covering more than 150 countries. A single PCT application filed within 12 months of your priority date preserves the right to seek protection in each member country, and you then decide which countries to enter, paying the fees for the ones that matter. In Australia, a PCT application must enter the national phase within 31 months of the earliest priority date.
That is why filing strategy is a commercial decision rather than a paperwork one. For a founder, the countries that matter are usually the ones where you will sell, manufacture, or raise capital from investors who care about protection. Filing in all 150 countries is neither affordable nor sensible; filing in none can leave you exposed where the value actually is.
Where founders usually lose value: disclosure and ownership
Two mistakes account for most of the damage this article can help you avoid, and both happen before the application is ever filed:
- Disclosing before filing: because novelty is judged worldwide against everything made publicly available, a single public disclosure before your priority date can be fatal. Australia does have a limited grace period under s 24 of the Act: information disclosed by you, or by someone who got it from you, within 12 months before filing can be disregarded when novelty is assessed, but only if the complete application is filed within the prescribed period. The grace period is narrower than founders assume. It does not protect you if a third party independently publishes the same invention, and many major markets, including most of Europe, have no grace period at all, so a disclosure that is harmless in Australia can destroy your rights overseas. The safe position is to treat any public disclosure as potentially fatal and to put confidentiality arrangements in place before you share details with investors, manufacturers, contractors or beta users.
- Unclear ownership: a patent is only as valuable as the paper trail showing who owns it. If co-founders, contractors, developers or advisers contributed to the invention, disputes can follow. As a general rule, the person who actually makes the invention is entitled to the patent, subject to any agreement, and inventions made by employees in the course of their duties usually belong to the employer. Written agreements that assign IP to the company, and records that document each contributor's role, remove the doubt. This is also where a shareholders agreement that deals with IP decisions, and employment or contractor agreements with assignment clauses, earn their keep.
Where a patent attorney and an IP lawyer change the outcome
The most valuable legal input usually comes before anything is filed, not after. A registered patent attorney is the person who takes your technical work and turns it into a specification that supports broad claims, anticipates how competitors might design around it, and survives examination. An IP lawyer's role is to make sure the patent sits inside a structure that works commercially: ownership assigned to the right entity, confidentiality in place before the first pitch, licensing terms that match the business model, and a strategy that coordinates patent timing with fundraising and launch.
At Artificer Legal we work with startups on the parts of the picture that a patent attorney does not cover: the ownership and confidentiality documentation, the commercial contracts, and the decisions about what to protect and when. We also coordinate with registered patent attorneys on the filing and prosecution side, so the technical work and the legal foundations move together. If you are at the point of showing your invention to someone for the first time, that is the moment to get advice rather than after the disclosure has happened.
The date that drives everything: your priority date
If you remember one thing from this article, make it this: the entire system runs off your priority date, and you can secure one for a minimum of $100 with a provisional application, before the product is finished, before the funding round, before you are ready to launch. Founders who lose patents almost never lose them because the invention was not good enough. They lose them because they disclosed too early, filed too late, or let a provisional application lapse while they were busy building the company.
The costs of getting it wrong are far larger than the cost of getting early advice. A provisional filing is inexpensive, a priority date costs nothing to hold onto for 12 months, and a conversation with an IP lawyer or patent attorney before you disclose your invention is cheaper than any of the disputes, lost rights or abandoned applications that follow a missed date. A free initial consultation can tell you quickly whether patents are even the right tool for what you have, and if they are, what the first filing needs to contain.