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 1: Provisional patent applications
A provisional patent application has a life of 12 months and is designed to provide flexibility to an inventor insofar as the inventor may add undisclosed material to their provisional patent application at any time during its 12 month life. This is not possible with a standard patent application as will be discussed in more detail later. It is important to note that provisional patent applications are not available in all jurisdictions. However, Australia and the USA are two such countries which offer the beneficial option of an inventor filing a provisional application at the start of their patent journey.
Do I need a provisional application?
In the majority of cases, a provisional application is the best starting point in seeking patent protection and indeed most inventors file a provisional patent application initially.
A provisional patent application provides the flexibility of the inventor being able to add new undisclosed material into the patent application at any time during the 12 month life of the patent application in the form of supplementary provisionals. This option is not available when filing a standard patent application and no new material can be added after filing if a standard patent application is filed.
If you have already disclosed your idea to the public prior to filing a patent application you may choose to file a complete patent application rather than a provisional patent application to take advantage of grace period countries. Grace period countries allow the inventor to file a patent application after a public disclosure as long as the inventor files a complete patent application within 12 months of that public disclosure. It is important to realise that you must file a complete patent application not a provisional patent application within 12 months of any public disclosure to take advantage of the grace period provisions for patents.
Provisional applications also provide the added benefit of the inventor being able to request a novelty and inventiveness search known as an International Type Search (ITS), which may be requested up to ten months after filing the provisional patent application. The ITS provides invaluable information as to the likelihood that your patent application is likely to get granted at formal examination.
Applying for a Provisional and what to do after filing
There are a few things that you need to check before filing your provisional patent application.
Firstly, has the inventor disclosed the inventive idea to the public and if so was it more than 12 months ago? If the inventor has made a public disclosure of the invention more than 12 months ago, then unfortunately the inventors opportunity to obtain patent protection has closed. If the inventor has disclosed their invention to the public and it was less than 12 months ago, there may still be an opportunity to obtain patent protection in grace period countries. In this case, it may be more appropriate to file a standard patent application.
Secondly, does the inventor have sufficient information about the invention or is it merely a concept? Whether the patent application is a provisional or a standard application the legislation states that the patent application needs to disclose sufficient information so that a “person skilled in the art” can perform the invention. This standard requires that someone working in the field of the invention could reproduce the invention without undue experimentation by reading the patent application and referring to their common general knowledge. If this disclosure requirement has not been satisfied, the patent application may be rejected on those grounds, so it is important to ensure sufficient detail is provided in the patent application.
If you have not yet disclosed the invention to the public and the inventor has sufficient information relating to the invention to meet the disclosure requirements the inventor is in a position to file a provisional patent application.
Once the provisional patent application has been filed, the next optional step would be to file a request for the patent office to perform a novelty and inventiveness search (ITS) on the provisional patent application. In this case, a fee is paid and a patent examiner with the Australian Patent Office performs a prior-art search and determines what if any of the claims are considered to be novel and involve an inventive step. This is typically performed around 2-3 months after the request for the ITS and can be requested soon after filing the provisional patent application.
Based on the results of the ITS, the patentee may make amendments to the claims to avoid any prior art that may have been raised in the ITS, providing a solid strategy in obtaining patent protection.
Filing a provisional patent application in Australia or USA – overview
Filing a US or Australian provisional patent application is normally the first stage in the patent application process in order to obtain patents around the world. An Australian provisional patent application is lodged by an Australian patent attorney at IP Australia and represents a cost-effective way to lay an international claim to your idea.
Priority date for provisional patent applications
The date on which a provisional patent application is received by IP Australia is known as its “priority date”. If, at a later point in time, you are granted a patent, you will be able to sue anyone who has infringed the patent after the priority date.
Once a provisional patent application has been filed by your patent attorney, you are free to disclose your new idea to interested parties, although we would recommend initially that you make such disclosures in confidence. Your new idea, whether product or software can then also be marked “patent pending”. By using a confidentiality agreement together with reference to your pending patent in meetings with third parties, the importance of confidentiality can be reinforced – if this is an aspect of your commercial strategy.
Misconceptions about provisional patent applications
There are a few notable misconceptions around the preparation of provisional patent applications and these include:
- That a provisional patent application does not need to be as detailed as a standard patent application.
- That a provisional patent application is a set scope of work that does not need to be defined.
Such misconceptions sometimes lead to inadequate provisional patent applications being filed, especially when not prepared by an Australian patent attorney.
Patent attorneys at Baxter IP are particularly cogent of the fact that the scope and detail of disclosure in your provisional patent application is often closely linked to the final effectiveness of your national patent applications filed in Stage 4. These national patent applications are often granted some 5 years after your provisional patent application is first filed. To explain the link between the two, we first need to understand in more detail how a provisional patent application works.
How does a provisional patent application work?
A provisional patent application is an invention specification lodged with IP Australia that, when set out properly by a patent attorney, includes both:
- A description of various examples (or “embodiments”) of your new idea or invention; and
- Claims, which are a series of legal definitions which become tests for infringement of your patent.
The way claims define the scope of a new idea or invention is by defining: (1) a broad notion of the new idea in what are called independent claims and by then defining (2) subsidiary, more detailed definitions of your new idea in what are known as dependent claims. Patent claims work like onion rings with the broadest independent claim(s) defining your optimal claim(s) to patent coverage (the outer layer) and the dependent claims defining contingency positions (the inner layers) that are used to circumvent prior art material (any information about the same idea that was publicly available at or before the priority date) during patent application examination processes.
In this way, a well-drafted provisional patent application prepared by an Australian patent attorney should establish a robust international filing date for your new idea.
Why are provisional patents so important?
1. A thorough provisional patent application supports your patent priority claim
A provisional patent application establishes an international filing date for any new idea or invention properly articulated in your patent specification. Stage 4 National Patent Applications that claim priority to this international filing date, in certain situations, are fully reliant on this priority claim to be valid. One such situation is where the new idea was publicly disclosed or other prior art become publicly available in the first 12 months post filing of the provisional patent application.
The problem is that this priority claim to the International filing date will only be upheld, where the full legal breadth of the claims were supported by adequately described embodiments of your new idea and this support was included in the patent specification of your provisional patent application.
A thorough provisional patent application supports the priority claim to your earliest international filing date and hence, in some situations, can make the difference between a valid or an invalid patent.
2. A thorough provisional patent application enhances your patent monopoly coverage
If an inadequate range of embodiments are provided in your patent specification, a patent office or court may interpret your claims more narrowly. Since embodiments are normally written into the Stage 4 National Patent Applications as a result of the detailed work originally performed on the provisional patent application and in any case, cannot be added post filing of your Stage 3 PCT International Patent Application, it is very important that your provisional patent application is a detailed disclosure of your invention.
Where claims are interpreted more narrowly, the ability of your granted patent to capture an infringement (i.e. its legal effectiveness) is limited. Therefore, our patent attorneys always recommend you file a detailed provisional patent application from the outset with enough embodiments to support the full breadth of your claims.
A thorough provisional patent application can enhance your monopoly coverage and your ability to stop patent infringement.
3. A thorough provisional patent application sets the ground work for patent examination
A provisional patent application filing is the first point at which the new idea is articulated in a scope-defined, legal manner in the claims. Whilst claims are normally reviewed and amended prior to filing your Stage 3 PCT International Patent Application or your Stage 4 National Patent Applications, the foundational wording of the claims is normally developed during the drafting of your provisional patent application. Further, since we know that claims define contingency positions during examination processes, the filing of a detailed provisional patent application with a well-articulated claim structure from the outset (i.e. a finely graded set of “onion rings”) helps achieve a successful result during examination of your patent application by creating better “fall-back” positions.
A thorough provisional patent application can help you achieve a successful result during patent examination.
Baxter IP’s quiver of provisional patent application strategies
A thorough approach to patent drafting requires strategic insights, here are some of ours:
- Identify the crux of the new idea: Protect the concept behind the new idea, not just specific implementations.
- Identify multiple inventions: Viewing the one product from different angles can often lead to being able to define multiple inventions. This can:
- help protect future research and development
- create intellectual property asset value
- reduce the risk of invalidity of your patent application; and
- better capture arising infringement.
- Brainstorm and then file again: Once your initial provisional patent application has been filed to establish an early filing date, meet with a group of creative and commercial employees together with your patent attorney to see if you can:
- find ways to broaden your claims
- develop new embodiments of your idea
- define ideas in different ways in the claims to create new independent claim sets; and
- think how a competitor might replicate your new idea in a less preferable way but in such a way as to avoid infringement of your claims.
- Focus patent protection on competitors, not consumers: It is important that patent claims be written correctly to ensure that competitors that will be producing the claimed apparatus, or carrying out the protected process, will be found to be infringing your patent – and not your customers.
- Focus patent protection on commercial advantages: The wording of the claims should be broad enough to protect the commercial advantages of the idea, and not just the particular apparatus or software.
- Patent protect the consumables: Where possible, it is important to patent protect not just the apparatus or process, but also consumables used in or with the apparatus or process. In this way, the important revenue streams can be protected.
- Targeting the arrow: In addition to protecting your new ideas, intellectual property protection can be targeted at hindering competitor product development by filing patents or registered designs around likely future versions of their product line.
- Protect products made by a process: Filing claims that patent protect products made by the inventive process can enhance protection in some markets.
- File provisional patent applications often: Where development lifecycles extend over months or more, consult with your patent attorney regularly as to whether a further provisional patent application needs to be filed to cover new project or product developments.
The bottom line
Since, a thorough provisional patent application enhances:
- the validity of your patent
- your ability to enforce your patent; and
- your ability to achieve a successful result during patent examination
It is therefore highly beneficial to prepare and file a thorough provisional patent application that has:
- A well-developed claim structure; and
- A very supportive detailed description
A well-developed claim structure can be achieved by:
- Capturing all new ideas associated with your product, system, process or software;
- Capturing new ideas from different perspectives with multiple sets of independent claims;
- With a finely tiered claim structure; and
- Brainstorming together with your patent attorney as to how a competitor might attempt to circumvent your claims and adjusting the wording in your claims accordingly.
A supportive detailed description can be achieved by:
- Capturing all embodiments thoroughly; and
- Brainstorming variations and covering these in your description too.
How much does a provisional patent application cost?
There is a fairly proportional link between:
- How well-developed a claim structure is and how supportive a detailed description is;
- The amount of professional time required to develop the patent specification; and
- Chances of successful patenting
Unfortunately, there are no shortcuts in preparing a thorough provisional patent application. When assessing the costs of different patent attorney firms, you should understand that the main cost of drafting and filing a provisional patent application lies in the professional time involved. So far as provisional patent applications are concerned: “you get what you pay for”. Given that the hourly rates of most patent attorneys (of similar experience) are relatively consistent, you might question why some are cheaper than others.
Typically, quotations offered by different firms are for provisional patent applications that vary in terms of:
- The number of independent claims sets;
- The number of dependent claims in each independent claim set;
- The depth of coverage in the description of the invention;
- The number of embodiments of your invention that are fully described; and
- The inclusion or otherwise of brainstorming to broaden coverage.
All of these 5 factors can affect the end outcome in terms of:
- The validity of your patent;
- Your ability to enforce your patent; and
- Your ability to achieve a successful result during examination.
It is therefore important to strike the right balance between budgetary requirements and the effectiveness of your intellectual property rights.
Baxter IP ensures that all of its provisional patent applications are drafted to high standards, meeting and surpassing appropriate legal requirements for patenting around the world.
Our capped-fee or fixed-fee quote for drafting and filing a provisional patent application will depend on the number of hours taken to draft the specification so we will normally set out a series of cost options for you to consider. Drafting and lodging a provisional application in respect of one invention generally ranges upwards from $4,000 depending on the nature and complexity of the invention.