Based on our investigation into the recent court and IP Australia decisions on patentability of four Aristocrat software innovation patents, we present three actionable steps in this article for patent attorneys and innovators to reduce subject matter objection risk for software patents from the outset. This article also gives an example of a certified software innovation patent without the subject matter objection raised during certification.
International patent search
Conducting a international patent search of prior art patents is valuable since it provides you with an indication of whether a patent application for your invention will be allowed.
In order to be patentable, an invention must be (1) new (novel); and (2) inventive. Although patent law varies from country to country, novelty and inventiveness of patent applications are at least usually assessed against any document published worldwide before the priority date of the patent application. Consequently, no international patent search will ever be thoroughly exhaustive as it is impossible to, with complete accuracy, search every document ever published worldwide. However, patent novelty searches are useful in indicating the state of the prior art and locating prior art that is likely to be raised during examination.
It is important to note that it is not possible to search any patent application that is filed less than 18 months prior because patent applications are only published at 18 months after their international priority date. This means that the results of a patent novelty search will likely miss relevant prior art if conducted within 18 months from when the patent application was first filed.
There are multiple options for international patent novelty searches, including:
- Pre-filing patent searches (i.e. patent searches carried out before a patent application is filed)
- International-type patent searches (based on a filed provisional patent application)
Our patent attorneys and patent searchers can carry out either or both of these types of novelty searches, as well as other international patent searches for you to help you de-risk your intellectual property protection efforts.
Patent search International patent search International type search Australian patent search Freedom-to-operate search