In order to understand whether your invention may be patentable and what scope of protection may be available, patentability searching is required.
Some situations justify investment into patentability searching before going to the cost of drafting and filing a patent application. In other situations, the added cost of patentability searching may be prohibitive, and applicants will choose to file without preliminary patentability searching.
Overseas protection must be sought within 12 months of an initial patent filing. Whether you file filing directly into countries of interest or file a PCT application, this stage often involves significant cost. It may be valuable to get an opinion on patentability before incurring these costs.
An early report on patentability may also be valuable where the potential of a technology needs to be demonstrated to investors.
Two options for obtaining early opinions on patentability are available to applicants in Australia. This article summarises these options, their key differences, and when you might choose to make use of them.
This type of search is available only to applicants of Australian provisional patent applications.
Through the international-type search, an applicant obtains a PCT-style search and examination report. The international-type search will be conducted by either IP Australia or the Korean Intellectual Property Office, though in practice it seems to almost always be conducted by IP Australia.
A search will be conducted for prior art relevant to the invention, and an opinion will be provided on the novelty and inventive step of the claims under the PCT standards. The opinion will also cover unity of invention, and some issues of clarity. Other specific Australian law requirements for the claims and specification are not covered by the international-type search.
An international-type search is treated with the highest priority by IP Australia, and these searches are targeted for completion within 6 weeks of a request being made.
Where a patentability opinion is required urgently, special care should be taken to ensure that the claims of your application conform to the requirements for unity of invention under the PCT. If the examiner considers there is a lack of unity, it may cause delay in issuing of the international-type search report.
An international-type search is voluntary, and must be requested by the applicant. IP Australia’s fee for the request is $950 AUD.
To ensure the report is provided in time for the applicant to consider their options before the 12-month deadline to continue with patent protection, any request for an international-type search must be made within 10 months of the provisional application’s filing date.
You do not need to respond to an international-type search report, and its findings are not binding on any subsequent complete patent application which is filed in Australia.
The preliminary search and opinion (PSO) is available only to applicants of Australian complete patent applications.
As with the international-type search, a PSO is voluntary and must be requested by the applicant. Any request must be made before an examination request is made.
IP Australia’s fees for a PSO are the same as for an international-type search, $950 AUD.
Unlike an international-type search which is generally conducted to the standard of a PCT search and examination, the PSO is generally conducted to the standard of a patent examination under Australian law.
This means that the PSO covers novelty, inventive step, and unity, but additionally covers Australian national law requirements for patentability such as manner of manufacture and utility, and specification requirements such as the clarity and completeness of the disclosure, best method, and support of the claims.
As with international-type examination on Australian provisional applications, a PSO on an Australian complete application is non-binding, and no response is required to any issues raised. It is possible to file a response, however any response will only be considered under regular examination, after an examination request is made.
Both an international-type search and a preliminary search and opinion are useful and cost-effective options to have a prior art search conducted and a third-party opinion provided on the patentability of your invention.
In some situations, the PCT-standard of the international-type search may be desirable, for example where an investor is not focused on patentability under Australian law. If this is the case, it may be a reason to file your initial patent application as a provisional application in Australia.
In other situations, such as where obtaining patent protection in Australia will be critical and particularly if there is the potential for objections under specific Australian rules, for example under the manner of manufacture test, a preliminary search and examination may be more valuable. In such circumstances you might file your initial patent application as an Australian complete application, or request a PSO on your Australian complete application in advance of requesting examination.
To discuss the details of your situation, whether an early opinion on patentability could be helpful for you, and what the optimal strategy might be, please get in touch with one of our team.
 Patents Regulations 1991 reg 3.14A(1).
 Patents Regulations 1991 reg 3.14A(3), Pct Applicant’s Guide – International Phase – Annex C, Australian Patent Office, p. 1.
 Patents Regulations 1991 reg 3.14A(2).
 Patents Act 1990 s 43A, Patents Regulations 1991 reg 3.14B.
 Patents Regulations 1991 reg 3.14B(2).
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