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 4: National phase patent applications
National phase patent applications overview & timing
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Stage 4 of the patent process is illustrated in Flowchart A above and involves either:
- Filing “national phase” patent applications post the filing of a Stage 3 PCT International Patent Application; or
- Filing national patent applications directly in the countries of interest either in the first instance or claiming priority to another patent application within the 12 month Paris Convention period (e.g. claiming priority to a Stage 1 Provisional Patent Application).
The filing deadlines for national phase patent applications and national patent applications are as follows:
- 30 or 31 months after the priority date for national phase patent applications; and
- 12 months after the priority date for national patent applications
Since the processes for 1. and 2. patent applications are largely the same and given that 1. is by far the more common path for clients of our firm, we will simply refer to “national phase” patent applications to refer to both on this page.
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10 strategies for selecting countries for national phase entry
As the national phase entry filing deadlines in the above table are the final dates by which you can choose the geographical coverage for patent protection, it is crucial to ask the right questions in determining the breadth of patent coverage to pursue. Here are 10 filing strategies that Baxter IP has developed for you to consider when selecting countries for national phase entry. We highly recommend that you discuss them in detail with your patent attorney.
- Your largest markets: particularly in cases where your product could be manufactured anywhere.
- Countries where competitors would be likely to manufacture an infringing product: particularly where competitors have existing manufacturing facilities that cannot be easily relocated.
- Countries where you are considering manufacturing: This helps avoid a manufacturer selling your product on the side.
- Your home ground: File in Australia to protect your home market – for most entrepreneurs it is the easiest market to access commercially.
- Your pilot markets first: Having a national phase patent application filed in the countries you are commercialising in initially enhances credibility in those markets.
- The United States: As the largest consumer market in the world, this jurisdiction represents by far and away the best value for money in terms of patent protection.
- Europe: Many countries can be protected by a single patent application in any country belonging to the European Union, which represents the 2nd largest consumer region in the world.
- China: The largest population in the world with a rapidly growing middle class. Contrary to traditional views, patent registration and enforcement is now generally very effective in China when combined with the right commercial and legal strategies.
- Countries where your patent is being infringed: In order to be able to address infringement with an enforceable right as soon as possible.
- File in your future markets: As patents have a 20-year lifespan, it is important to consider that the markets that are most valuable now may not be the markets that are most valuable in 10 or 15 years’ time.
In order to assist you in deciding on what level of geographical coverage to pursue, please refer to the diagram below, which outlines in respect of common country selections:
- National phase patent filing deadline (i.e. post a PCT international patent application)
European (EP) regional patent applications
If you wish to obtain patent protection in Europe, you can utilise a European regional patent application. While it is possible to file directly into individual countries in Europe, a European patent application can be filed designating up to 38 countries and is examined as a single application. This generally leads to significant cost reductions. Once your European patent application proceeds to grant, it is necessary to register the application in the individual countries in a process known as “validation”.
Your patent application will be published (i.e. disclosed to the public) at 18 months after its priority date. This means that your patent specification can be read online by anyone from that point in time.
Once a national phase patent has been granted, you have an enforceable right in the country in which you have obtained grant. However, it should be noted that grant is not a presumption that the patent is valid.
Ultimately, if you decide to enforce your national patent rights, the matter will usually be heard in court, and the alleged infringer of your patent will have the opportunity to lodge evidence against your patent to attempt to invalidate it. This is known as a “cross-claim for revocation”. You may or may not be successful in such a matter, and it is not uncommon for patents to be invalidated in court (e.g. by locating information that is not uncovered during examination). However, the vast majority of patents are never litigated; instead, a patent usually forms a strong and useful starting point for commercial negotiations and agreements, such as licensing.
National phase patent application costs
The costs associated with obtaining and maintaining patents can be grouped into 4 main categories:
- Filing costs
- Prosecution costs (e.g. examination, argumentation, acceptance & grant costs)
- Renewal costs, and
- Validation costs (for European applications only)
Renewal costs are usually incurred annually and are paid to the respective patent office to keep the application or patent alive. Patents usually have a term (lifespan) of 20 years from their Stage 3 International Patent Application filing date.