- Who does what in the patent system
- What the Act requires before a patent can be granted
- Examination: where IP Australia does its own searching
- Two different searches: patentability and freedom to operate
- Where the scheme trips people up
- How a lawyer or patent attorney fits in
- The search is the leverage point before the priority date
Applying for a patent in Australia does not have to start with a search, but it usually should. A patent search is a structured review of patent databases and other public sources for prior art: earlier patents, published applications, journal articles, conference papers, product manuals, websites, sales and public demonstrations that disclose the same or a similar invention. The results matter because the Patents Act 1990 (Cth) (the Act) only lets IP Australia grant a patent for an invention that is new and inventive compared with what was already publicly available before its priority date.
This article explains how the Australian patent system works around that search: what the Act requires, who does what, when IP Australia does its own searching, the filing pathways open to you, and where a lawyer or patent attorney fits in. The short version is that a search before filing is not legally compulsory, but the system is built so that the searching happens anyway at examination, and doing it early is almost always cheaper than doing it after your application is on foot.
Who does what in the patent system
Three sets of actors drive the system, and each has a distinct role:
- The applicant: the business or inventor who files the application, chooses the filing pathway, pays the official fees, and responds to any objections raised during examination.
- IP Australia: the government agency that administers the Act. Its examiners search the prior art, examine each application against the statutory criteria, publish applications, and grant patents.
- A patent attorney or lawyer: optional but common. A patent attorney runs professional searches, drafts the specification and claims, and manages the examination process. A lawyer advises on strategy, ownership and the commercial documents that sit around the patent.
The interests here mostly align. The applicant wants a valid, enforceable patent at reasonable cost. IP Australia wants to grant valid patents and refuse invalid ones. Both are served by knowing what the prior art says before money is spent, which is why the search sits at the centre of the process even though no one forces you to do it yourself.
What the Act requires before a patent can be granted
The threshold for a standard patent is set out in s 18(1) of the Act. An invention is patentable if, so far as claimed in any claim, it is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, is novel when compared with the prior art base as it existed before the priority date of the claim, involves an inventive step, and is useful.
Two of those tests are defined by reference to the prior art base. Under s 7 of the Act, an invention is novel unless the prior art base contains information made publicly available in a single document or through a single act, or in related documents or acts that a person skilled in the art would treat as a single source. It involves an inventive step unless the invention would have been obvious to a person skilled in the relevant art in light of the common general knowledge and the prior art. "Publicly available" is global, not Australian: a conference presentation in another country, a foreign patent, or a product sold overseas before your priority date can all count.
The prior art base is broad. It includes granted patents and published applications, but also journal articles, conference papers, technical manuals, websites, product datasheets, public demonstrations and offers for sale. It also includes the contents of earlier Australian complete applications with earlier priority dates, even where those applications have not yet been published. If any of that material discloses your invention before your priority date, it can defeat novelty or inventive step at examination, or be used later to revoke the patent.
Notice what the Act does not do: it imposes no requirement to search before filing. Under s 29 an application is a patent request plus a specification, and nothing more. You can lodge a provisional application with a short specification and no search at all. The searching is built into a later stage, examination, which is why the pre-filing search is voluntary due diligence rather than a legal gate. IP Australia's own guidance for applicants lists doing your research as step one, and warns that an invention loses eligibility if it was made public more than 12 months before filing.
Examination: where IP Australia does its own searching
For a standard patent, examination must happen before the patent can be granted. Under s 44 of the Act, the applicant may request examination within the prescribed period, or the Commissioner may direct the applicant to request it. Once an application is open to public inspection, third parties can also require the Commissioner to direct examination.
The examination itself is where the official search occurs. Under s 45 the examiner must examine the request and specification and report on whether the specification complies with the drafting requirements in s 40 and whether, to the best of the examiner's knowledge, the invention satisfies the s 18(1) criteria of novelty, inventive step and usefulness. That "to the best of his or her knowledge" test is carried out by searching the prior art, and the examiner can raise objections against any claim that appears to be anticipated or obvious.
There is also an earlier, lighter touch. Under s 43A IP Australia may conduct a preliminary search and opinion once a complete application has been filed, before full examination is requested. That gives an early signal of whether the invention looks patentable, at a point where you still have room to amend the claims or abandon the application cheaply.
The stages after filing follow a set sequence. A complete application is usually published around 18 months after its earliest priority date, when the specification becomes open to public inspection under s 54. Publication is also the moment your application starts to form part of the prior art that can be cited against later filers. If the examiner's report raises objections, you can respond with submissions, amend the specification and claims, or let the application lapse. If the objections are resolved, the application is accepted and proceeds to grant.
A granted standard patent runs for 20 years from the date of the patent under s 67. For pharmaceutical substances the term can be extended under ss 70 to 77 by up to five years to compensate for regulatory approval delays, giving a maximum of around 25 years. After grant the patent can still be challenged, and validity can be tested in revocation proceedings.
The filing pathways and what each produces
You have three main routes into the system, and the choice is really about timing and budget rather than about the invention itself.
Provisional application
A provisional application under s 29 is a patent request plus a provisional specification. Its only legal effect is to establish a priority date for what the specification discloses. It does not give you enforceable rights, it does not stop competitors, and it is not examined. Its value is time: you have 12 months from filing to lodge a complete application (or a PCT application) claiming priority from it, as required by s 38 and confirmed in IP Australia's guidance on provisional applications. If you file nothing within that window, the provisional lapses and the priority date is lost, and any later filing will be judged against the prior art as it exists on the later date.
Standard application
A standard application is filed with a complete specification, which must describe the invention fully and end with claims that are clear, succinct and fairly based on the description. The specification is examined under s 45, published around 18 months after the priority date, and if accepted gives the 20-year term described above. This is the pathway for most inventions with a commercial life beyond a couple of years.
International application (PCT)
If you may want protection outside Australia, you can file a Patent Cooperation Treaty (PCT) application within 12 months of your earliest priority date. The PCT route does not grant a single world patent, but a single international application preserves the priority date in more than 150 countries while you decide where to proceed, and it produces an international search report from a competent authority. You then enter the national phase in the countries that matter to you, usually around 31 months from the priority date, and each national office examines the application under its own law.
One pathway that is no longer available is the innovation patent. Australia stopped accepting new innovation patent applications from 26 August 2021, as IP Australia explains. Existing innovation patents continue until they expire, but new protection is now via the provisional, standard and PCT routes.
Two different searches: patentability and freedom to operate
"Patent search" is used loosely, and the two things people usually mean answer different questions.
A patentability search tests whether your invention is likely to meet the s 18(1) thresholds. It looks at published material worldwide to see whether the invention appears new and non-obvious. This is the search to run before filing, because it tells you whether protection is realistically available and what scope of claims you can seek.
A freedom to operate search, by contrast, checks whether making, using, selling or importing your product in a particular country would infringe someone else's live patent rights. It looks at granted patents and pending applications that are still in force, not at all prior art. The two searches frequently point in different directions: you might be able to patent your improvement, yet still infringe an earlier patent that covers the underlying product, or you might find your invention anticipated while having a clear commercial path.
For a product headed to market, both have a place. The patentability search shapes whether and how you file. The freedom to operate search shapes whether and how you commercialise. They use different methods and different databases, and conflating them is one of the most common reasons businesses discover infringement risk only after investing in tooling and launch.
Where the scheme trips people up
The most expensive mistakes in the system cluster around timing and disclosure, and they are all avoidable with a search and a calendar:
- Public disclosure before filing: Any disclosure of the invention before the priority date can become prior art against you. The Act does contain a limited grace period: under s 24 information made publicly available by you, or with your consent, is disregarded for novelty and inventive step if a complete application is filed within the prescribed period of up to 12 months. But the grace period is narrower than many founders assume, it does not apply in every overseas jurisdiction, and relying on it is a gamble. Keeping the invention confidential, with non-disclosure agreements where you must speak to manufacturers or investors, remains the safe path.
- Assuming a provisional application protects you: It reserves a priority date and buys 12 months; it gives no enforceable rights, so a competitor who sees your disclosure during that window can operate freely.
- Missing the 12-month deadline: The provisional to complete or PCT window is hard. Miss it and the priority date is gone, and anything published in the meantime counts against you.
- Searching only Australian sources: The prior art base is worldwide, so a search that stops at Australian patents will miss the material that actually defeats you.
- Confusing grant with freedom to operate: A granted patent is a right to exclude others; it is not a licence to use the invention if it overlaps with an earlier patent.
- Filing before the invention is fully described: The specification as filed fixes what you can claim. If the claims must be narrowed to avoid prior art found later, your scope of protection shrinks with them.
How a lawyer or patent attorney fits in
Professional help concentrates where the system punishes mistakes: drafting, searching and deadlines.
A patent attorney is typically engaged to draft the specification and claims, because s 40 of the Act requires the specification to describe the invention in enough detail for a person skilled in the art to perform it, and the claims to be clear, succinct and fairly based. Drafting quality directly influences how much prior art can be avoided and how defensible the patent is. Attorneys also run or commission professional patentability and freedom to operate searches, interpret the results, and respond to examiner reports within the statutory deadlines.
A lawyer adds value around the edges of the process. That includes advising on which filing pathway suits your commercial plan, checking ownership arrangements so the business actually owns inventions created by employees and contractors, and putting the confidentiality and commercial documents in place before you disclose anything. Because the search and the application are only as good as the claims and the ownership behind them, most applicants benefit from coordinating the two roles early rather than treating the patent filing as a purely administrative task.
At Artificer Legal we work alongside patent attorneys on the strategy, ownership and commercial side: mapping the search scope, structuring the filing sequence, and making sure the agreements around the invention protect you if things go wrong.
The search is the leverage point before the priority date
Every assessment in the system looks backwards to the priority date. Novelty, inventive step and usefulness are all judged against the prior art base as it existed before that date, and anything published after it cannot invalidate your patent. That single fact explains why the pre-filing search is the highest-value step in the whole process: it is the one point where you can still choose. Run the search before the first public disclosure and before the first filing and you keep every option open, refine the claims, amend the invention, secure an early priority date with a provisional application, or walk away before spending money on drafting and fees. Skip it and the system makes the decision for you at examination, when the cost of fixing the problem is far higher.
If you are close to filing and have not searched, or have already disclosed the invention and need to know where you stand, an initial consultation is a proportionate first step. It is far cheaper than a refused application, and it tells you which of the pathways above is still realistically open to you.