Forewarned and forearmed - Australian International Type Search Reports for patents

The road to obtaining a patent may take applicants on a long and expensive journey. Whilst prosecution shortcuts exist (for example via expedited examination), applicants must still ensure their patent applications satisfy registration criteria. This includes the requirements of novelty and inventive step (obviousness). Streamlining this aspect of the prosecution journey and being aware of potentially relevant issues at an early stage (including prior art) may reduce the rounds of examination reports and associated responses with a patent office. One way this may be achieved is by obtaining an Australian International Type Search Report (ITSR).

The patent prosecution track

Provisional applications

Common patent practice strategies involve initially filing a provisional application to secure an early priority date. A provisional application on its own will not result in an enforceable patent. Once a provisional application is filed, an applicant has up to 12 months to file a “complete” application either directly in each country of interest or via an international Patent Cooperation Treaty (PCT) application.

Complete applications

Should the applicant decide to continue with the application past the “provisional” stage, the specification filed for the complete application is the document that will be published and examined. The content of the provisional specification remains confidential if the application is not completed. It is only published 18 months after the first provisional filing date if a complete application is filed. The confidentiality of the provisional specification provides substantial flexibility with filing strategies where patent protection may be investigated without committing to the patent process and related publication.

The filing of a complete application is the last time in the patent process where new content may be added to an application. For example, where further experimental data may be required to support a broader patent position. Since the filing of the complete application presents a critical point in the patent process, full knowledge of the closest relevant prior art is essential. This enables the preparation of a robust completed patent specification capable of providing flexibility and breadth for patent claims.

Obtaining an ITSR through IP Australia is a cost-effective way to determine prior art relevant to a previously filed provisional application before committing to the filing (and publication) of a complete application.

International Type Search Report process

ITSR formalities

The ITSR provides both a search for relevant prior art and a non-binding patentability opinion. It also remains confidential unless a complete application is filed. As IP Australia has reduced its official fees to $950 for obtaining an ITSR, this provides an attractive prior art searching option compared to commercially available options. By being forewarned about possible issues, an attorney will be in a position to advise an applicant on the issues they could face during the international or national examination stage.

Once a request has been filed, IP Australia aims to provide its report within eight weeks. An ITSR therefore provides an early warning system that allows an applicant to adapt their filing strategies with additional information at their disposal. This is to be contrasted with the likely insurmountable problem faced by an applicant where deficiencies are identified at a much later stage.

In cases where an applicant has filed an initial provisional application in another jurisdiction (such as the USA) the same specification, or even an amended form thereof, may also be filed in Australia within the 12 month priority period. An ITSR search may then be requested on the Australian provisional application.

ITSR results

In the ITSR an Examiner may raise a number of objections, alleging that one or more claims:

• is not novel and/or lacks an inventive step (i.e. the subject matter is arguably obvious)
• lacks clarity (e.g. an integer or component is not adequately defined)
• is not enabled over the entire scope of the claims and/or
• lacks support (i.e. the defined invention is broader than the perceived contribution to the art, or the inventive concept).

Even if the result on an ITSR is positive, an attorney may consider whether additional information, for example additional experimental data, should be included to justify the breadth of patent monopoly being sought. A positive report may also be utilised to highlight the viability and merits of an invention. This is an important consideration if funding is being sought to support an applicant’s innovations.

If the ITSR suggests that the scope of any claims would need to be severely narrowed to obtain an enforceable patent, or it will be difficult to obtain protection for the preferred commercially relevant embodiments, an applicant has a number of options, including:

• continuing with the filing of a complete specification
• adapting the invention and refiling it in a modified provisional specification or
• withdrawing the provisional application so that the knowledge of the invention can be maintained as a trade secret.

The specific route chosen is dependent on a number of factors, including:

• the potential importance of the invention
• the ability to modify the invention and/or
• the overall costs of patent process.

Whilst the various standards for patentability vary from jurisdiction to jurisdiction, an upfront warning of any issues will save both time and money for an applicant. The knowledge obtained from the ITSR will assist an attorney and an applicant in the development of an appropriate strategy to obtain the best possible result for the protection of an invention.

Although there is no guarantee that the ITSR will identify each and every document of relevance, especially if a document is not in English, it is a powerful tool that functions to provide an applicant with an insight into potential issues and time to address them at an early stage.

In summary, if an ITSR is requested, a patent attorney can review the ITSR and associated documents to qualify the potential impact of any documents and objections cited and raised in the ITSR. This analysis will assist an applicant in making an informed decision regarding their options for a patent.

Partial refund of PCT search fee

When a PCT application is filed, one official fee that must be paid is the search fee. For applications where IP Australia is designated as the International Search Authority, they will draft and issue the International Search Report (ISR) and associated International Search Opinion (ISO), and the search fee is AUD2,200.

An applicant may obtain a discretionary partial refund of the search fee in cases where an ITSR has been issued:

• A 50% refund (i.e. AUD1,100) may be provided where:
  • the ISR and ISO is based solely on the results of the ITSR or where only a minor top up search of the intervening period is required; and
  • no significant categorising of citations is needed.
• A 25% refund (i.e. AUD550) could be obtained if:
  • the search report is substantially based on the results of an earlier search, but additional searching effort in addition to a top up search for the intervening period is required; or
  • the relevance of the earlier search results upon which the search report is wholly based is needed to be reconsidered due to significant changes in scope of the invention claimed.

In addition to potentially saving on costs during examination at the national level at a later date, a direct tangible benefit is obtained earlier in the prosecution process, and within several months of the PCT application being filed.

ITSR key takeaway points

• Before filing any patent application, including a provisional patent application, it is always recommended that at least a brief search is conducted to identify any potential prior art. Given the search engines and tools available to IP Australia, an ITSR can complement any other search results an applicant (or third party), has obtained.
• Upfront knowledge of any potential problems can assist applicants in making informed decisions regarding their patent applications, before investing significant time and potential costs with the filing of a complete application and prosecution of multiple applications around the globe.
• The potential partial refund of an Australian PCT search fee also increases the attraction of the ITSR.