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 3: PCT International patent applications
How to patent an idea internationally?
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To obtain patent protection in any country, it is necessary to file a patent application in that country. The filed patent application will then be examined according to the patent rules and regulations of that country.
If you wish to file a complete application in a country other than Australia and New Zealand a complete application can be filed by:
- Filing a Patent Cooperation Treaty (PCT) application
- Filing convention patent applications directly in the countries of interest
The patent cooperation treaty (PCT) provides a centralised filing system for a patent in any of the designated member states of the PCT.
The PCT currently has 153 contracting states and includes major trading partners with Australia.
Alternatively, as per Option B, individual applications can be filed directly in each of the countries you wish to file patent applications in.
If a priority application such as a provisional patent application has been filed in Australia a complete application must be filed in 12 months from the initial filing date.
If a standard patent application has been filed in Australia to establish a priority date, a PCT application or a convention filing can also be made within 12 months of the filing date of the standard patent application.
What is a PCT international patent application?
A PCT patent application extends the applicant’s right of priority to 153 member states. In other words, the priority date of the Stage 1: Provisional Patent Application will be recognised in all member states of the PCT for the purposes of examination of a patent application and for enforcement of any granted patents in each designated country that is a member state of the PCT.
What are the benefits of a PCT international patent application?
- Delay in prosecution costs associated with national phase entry: the deadline for filing individual complete patent applications in the countries of interest is delayed from 12 months by up to a further 18 months.
- Delay decision to designate countries: the option to have input in designating countries for patent filing may be valuable to a commercialisation partner that has, for example, reach in a number of foreign markets.
- A search conducted by the IPE with results that while, not being binding on any of the member states, is often considered during prosecution in some countries.
Decide if you need an international patent application
It is advisable to speak with a commercially focussed patent attorney to decide if you need a PCT application and to start thinking about filing a PCT application.
Factors to consider include your commercial plans such as meetings with manufacturers or any R&D timelines. It is important to consider and share your commercial plans with your patent attorney at the beginning of the patenting process.Your patent attorney can then recommend suitable options for you.
Publication of an international application
PCT patent applications are published internationally during the international phase, at 18 months from the initial filing date of the priority application.
Search report and written opinion
The PCT international patent process also includes an International Search and Written Opinion in relation to the patentability of your invention. Favourably, if a Stage 2: Novelty Search was performed, a partial refund is often available for the cost of the PCT International Search.
If the Examiner has raised objections in the Written Opinion, a response can be filed supported by amendments made to the claims of the patent application, if necessary, together with a Demand for further International Preliminary Examination (IPE), to better position your application for IPE. The IPE, together with an analysis of the results by your patent attorney, can give you an idea of the scope of patent protection you may be able to secure in national patent offices around the world.
During the IPE, your patent attorney can respond to the Written Opinion to attempt to have the examiner consider your invention as patentable and issue a clear International Preliminary Report on Patentability (IPRP). A clear report can greatly increase the value of your IP Asset and is generally held in high regard by potential investors or licensees. If you do not respond to the WO, it is published as the IPRP.
If you have any questions related to filing a patent application, feel free to contact any one of the patent attorneys at Baxter IP.