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.
Stage 2: International-type patent search
IP Australia offers a highly cost effective option for an international patent search called an “international-type search”.
We would almost always recommend you have an international patent search carried out if you have had a patent attorney file a provisional patent application for you recently, except in circumstances where you have commissioned a detailed patent novelty search prior to filing.
An international-type search typically takes IP Australia about 6 – 8 weeks to complete then you should allow your patent attorney time to conduct the review of the search results. It is easy to take an overly negative view of patent search results if they are received without a review from your patent attorney. A patent attorney will quickly recognise in the results:
- any prior art that was incorrectly identified by the searcher; and
- how your patent claims can be reworded to circumvent the search results.
The bottom line – if the search results look similar to your new idea, don’t despair! Speak to an Australian patent attorney about the patent search results as the result and your options may well be different to how you initially perceive it.