QLD Creating Product in Australia Despite Existing Patent in the US?

[brn]

I've been doing R&D on a product idea for a few months and after reaching a point where I felt it was worth pursuing I decided to do a patent search. Unfortunately, I found an existing patent that was filed in early 2016 for almost the exact same idea/invention. The patent is currently in the Published state and as best I can tell has only been filed in the US.

My question is around the implications of pursuing the idea in Australia despite the existing patent. I'm interested in the idea as a technical undertaking to look at how it can be achieved and ideally would be able to create a run a business off it within Australia. The existing patent is quite vague in terms of specific implementation though the concept is exactly the same I have in mind.

I have no plans at this stage to attempt to sell the product in the US or anywhere else and understand that the patent would prevent me from doing that anyway. I've done some research and do not believe any actual product has been created or released in the US yet so they are either just filing the patent as protection or are still in the R&D phase.

If I pursued the product, I understand that I would be unlikely to be able to file a patent in Australia given the prior art already exists in the US. However, assuming they do not file a patent in Australia, are there any implications to me creating a business in Australia, other than not being able to patent the invention myself? Or, if they decide to file the patent in Australia at a later date, can I then be held liable?

So, for example, in three years time they decide to file the patent in Australia and I've been in operation for a few years, would I still be infringing the patent even if I've fully developed my own technology?

 

[Kim Walters]

You may need IP analytics as to whether you have "Freedom to Operate" i.e. infringement clearance. Seek expert advice as this is a highly specialised area.

 

[Leonard Mancini]

Good recommendation from Kim, get a freedom to operate advice from an IP lawyer or patent attorney.

However, just to answer one aspect of your query, there are time limits for them to file "convention applications" in foreign countries such as Australia.

Generally speaking, they have 12 months to file an Australian application from the date of priority date in the US if they want to also claim that priority date.

Sometimes (usually in the absence of any sales of the patented product) a claim to priority may be forgone by the applicant which then means they usually have another 6 month to file an Australian application over an above the 12 months as it is usually at 18 months a patent application is published. So long as they file it here before it was published anywhere in the world, it may be a valid application.

So there really isn't any prospect for them coming back in three years and filing an application if had been applied for and published already somewhere in the world, including the USA. Any such application would be invalid.

You should run the patent number you have through INPADOC database at ESPACE.NET or the Global Dossier DB at UPSPTO to determine whether there are any Australian equivalent applications. This should be redone in 18 months time to see if it were applied for during the period when applications are not discoverable.