In Australia, the first step of the patenting process for many applicants is the filing of a provisional application. Filing a provisional application has many advantages including: establishing an internationally recognised priority date; providing a 12-month window in which the applicant can further develop its idea before a complete (or PCT) application needs to be filed;[1] and delaying the upfront costs associated with a complete application.
A lesser exploited advantage is the option of performing an international-type search (ITS) on Australian provisional applications. This article explores the benefits of performing an ITS at the provisional stage.
What is an International Type Search (ITS)?
The ITS (also known as an Article 15(5) International Search) is an optional search which can provide an early indication of the relevant prior art and objections that may arise later if a complete (or PCT) application based on the provisional application undergoes examination.
The ITS is regulated by the rules of the Patent Cooperation Treaty, which likewise govern International (PCT) applications. Therefore, when performing the ITS, the Patent Office typically takes the same approach as it does when conducting searches for International (PCT) applications in its capacity as an International Searching Authority. Thus, the standard of the ITS is typically high.
An ITS can be based on the claims of the provisional application or on a separate search statement. For example, if you plan to file (or have already filed) one or more top-up provisional applications, you may choose to request an ITS on the original provisional application but construct a search statement which relates to the contents of the additional applications.
For applications with multiple inventive concepts, these additional inventive concepts can be searched at the same time for an additional fee.
What does an ITS tell me?
An ITS can provide an early foray into the mind of an examiner, before the costs associated with an international filing strategy are incurred. This can enable you to make informed decisions on your international filing strategy at an early stage.
For example, the ITS may provide an early indication that at least the Australian Patent Office considers the claimed subject matter novel and inventive.
Alternatively, the ITS may identify problematic prior art. This can enable you to modify the scope of any complete application based on the provisional application to stop the prior art being problematic during prosecution of the complete or PCT application. This may simplify the later prosecution of the complete application(s) claiming priority from this case.
By identifying close prior art, the ITS may assist an applicant in refocusing its research priorities (for example, if there are aspects of the invention that differentiate from the prior art, but that require better supporting research and exemplification).
As a “worst-case” scenario, the ITS may identify prior art that you are unable to work around. This can enable you to abandon the application entirely, without incurring the costs associated with filing a complete or PCT application.
In this regard, requesting an ITS can be particularly beneficial if little to no prior art searching was done prior to the provisional application being filed.
When and how can I request one?
An ITS must be requested within 10 months of the filing date of the provisional application.[2] It is initiated by requesting a ‘competent’ Patent Office to perform the search. The request must include the scope of the search and the associated fees.
For Australian provisional applications, both the Australian Patent Office and the Korean Intellectual Property Office are considered ‘competent’ to perform the ITS (see [2023] APO Annex C). Thus, the application can be made to either of these Patent Offices.
Typically, the Australian Patent Office takes 6-8 weeks to perform the ITS, so you are quickly made aware of any significant issues with your application.
The official Government Fee for requesting an ITS is $950.[3] However, you may be eligible for a partial refund of the PCT Search Fee if you go on to file a PCT application claiming priority from the Australian provisional and the Patent Office can use the results of the ITS when conducting the international search.
What next?
If you have any further questions about what an ITS is and how it works, please contact a member of the Griffith Hack team.
[1] Patents Act 1990 (Cth) s 37(4).
[2] Patents Regulations 1991 (Cth) Reg. 3.14A.
[3] Patents Regulations 1991 (Cth) Schedule 7, Item 236.
