Optimise your patent protection strategy with searching
Key points
- IP Australia offers an invaluable patent search report that can indicate the patentability of an invention.
- The search results can help applicants drastically reduce long-term patent costs and make more strategic protection decisions.
- The search should be requested no later than three months before the deadline for filing complete and overseas patent applications.
Knowledge is power
The journey towards a granted patent is usually a long and expensive one, and it can all be for nothing if the invention was never going to be patentable in the first place.
There are sobering stories of companies squandering enormous amounts applying for patent protection around the world, only to discover years into the process that their invention is not patentable.
To avoid these costly decisions and throwing good money after bad, it can be crucial to learn early on whether an invention is likely to be patentable.
Enter the International Type Search (ITS) offered by IP Australia.
International Type Search (ITS) – a reliable crystal ball
For an invention to enjoy patent protection, it must be novel over everything in the public domain before the filing date of your first patent application. If an invention is not novel, it will not be patentable, simple as that.
Before overly committing to patent protection, it is particularly useful to know whether an invention is novel — this is where the International Type Search (ITS) is a valuable tool.
The ITS is a service offered by IP Australia, wherein one or more qualified patent examiners will examine a provisional patent application (or a search statement) and provide their opinion on the novelty and inventiveness of an invention.
Currently, IP Australia only charges a fee of $950 for conducting an ITS, and, in our opinion, this represents superb value to patent applicants. For comparison, large IP firms easily charge upwards of $3,000 for a similar service. As such, if applicants wish to determine the potential novelty and inventiveness of their invention, we have no qualms about recommending an ITS conducted by IP Australia.
When to request an ITS
An ITS can be conducted based on the patent specification of a well-drafted Australian provisional patent application.
It is crucial for the patent specification to be professionally drafted because IP Australia’s search results will depend on how broadly and accurately the invention has been claimed. If poorly drafted claims are provided to IP Australia, then less meaningful results will be returned.
So, while an ITS is very cost-effective, the results will only be as good as the patent specification. It is thus vital to have your patent specification professional drafted by a registered patent attorney who has the right technical background for your invention.
Once an ITS is requested, it can take IP Australia up to six weeks to return with their results. The results will take time to digest, and may require amendments to be made to your patent specification. As such, it is often best to request the ITS no later than three months before the 12-month convention filing deadline associated with your provisional patent application.
Additional cost-savings of the ITS
In filing an international PCT patent application, a fee is paid to have a search conducted on the PCT application. A bonus of having an ITS conducted is that, if the search results of the ITS are relied upon during the PCT stage, a substantial amount of the PCT search fee is refundable.
Key takeaways
- IP Australia’s International Type Search (ITS) service can reveal the patentability of an invention.
- A substantial cost of the ITS is refundable during the PCT patent application process.
- An ITS should be requested based on a well-drafted provisional patent application to obtain meaningful results.
- An ITS should be requested no later than three months before the 12-month convention filing deadline of your provisional patent application.
