As part of the upcoming Raising the Bar legislative changes, IP Australia will introduce two new search procedures and corresponding search fees for complete (i.e. non-provisional) applications for standard patents. While one of these procedures is optional, the other and its corresponding fee will be applicable at IP Australia’s discretion.
Preliminary Search and Opinion
The first and optional search procedure is the preliminary search and opinion (PSO). Its rationale is said to provide quality search results at the earliest opportunity to everyone – including patent applicants and any third parties, such as competitors, interested in assessing the patentability of the patent applicant’s claimed invention. The PSO if requested will provide applicants of complete applications with an option to obtain an early search and opinion.
The PSO comes at a cost of $2,200. This is on top of the application filing fee ($370) and requesting examination fee ($490 for most non-national-phase cases). It is unclear in what form the PSO results will take, or how comprehensive the “opinion” will be. The Examiners’ Manual suggests that the PSO will report on most grounds of objection normally found in an examination report, including novelty, inventive step, manner of manufacture (i.e. patent-eligibility), utility, unity and support1. Users of the European patent system will recognise that the PSO appear somewhat similar to the European supplementary search report introduced several years ago.
Originally IP Australia wanted to make this optional search and the corresponding fee compulsory. After receiving concerns from various stakeholders of the Australian patent system, IP Australia’s position has softened slightly and has now made the PSO optional. It is however unclear how useful or popular such an optional PSO will be, given that there already exist perhaps more attractive alternatives:
International-type search - Frequent users of the Australian patent system will recognise that the PSO cost is exactly the same as the cost for an International-type search (ITS), which is often requested by applicants of provisional patent applications. From a fee point of view, it appears that an ITS and a PSO should receive the same search quality. However, filing a provisional application ($110) in the first instance and requesting an ITS ($2,200) can have advantages over requesting a PSO ($2,200) when filing a complete application. Firstly, results of an ITS will remain unpublished, which may be important for some applicants. Conversely, results of a PSO can be viewed by anyone including competitors once the complete application becomes open for public inspection. Secondly, a positive side effect of filing a provisional application in the first instance is of course an extra year of patent protection.
Innovation patent – The above alternative requires the applicant to make a decision to file a provisional application before filing a complete application. If provisional filing is not desired or is too late, another alternative to a PSO may be to file an innovation patent ($180) as a divisional to the complete application and request examination ($500). This alternative comes at a significantly lower cost than the PSO, though innovation patents are limited to a maximum of 5 claims and are examined on the lower requirements of an innovative step rather than an inventive step.
These alternatives to the PSO are summarised in the following table:
Click here to view table.
Complete Search and Opinion
The second search procedure is not really new, and does not really have a proper name as stated above. It in fact relates to original searches and opinions that an examiner would now conduct and provide where no equivalent or quality searches have already been done elsewhere. What is new is the discretionary fee of $1,400 charged by IP Australia.
IP Australia sees an inequality in the amount of searches examiners have to conduct between patent applications with and without equivalent or quality searches. For example, Australian national phase applications will often be issued with a first examination report that simply reiterates the International Preliminary Report on Patentability (IPRP) issued for the originating PCT application. In comparison, a first-instance filing in Australia with no PCT or foreign equivalents will almost certainly require a completely new search and opinion by the examiner.
IP Australia’s reaction to this inequality is to introduce the new fee for all applications requiring such a complete search and opinion. To put into context, this fee is almost 3 times the current examination fee for a non-national-phase application and more than 4 times the current examination fee for a national-phase application. And this fee is charged at IP Australia’s discretion.
The recently updated Examiners’ Manual provides that examiners may undertake additional searching, a circumstance in which the additional fee is likely payable, if the examiners suspect that “better” citation may be found2. This new search fee will therefore be very likely applicable to non-national-phase applicants and those who wish to seek patent protection in Australia only or in countries where examination or search results are unavailable at the time the Australian application is examined. The new fee may also impact some national phase applicants, too, if the examiner believes that the International Search Report (ISR) is not adequate. There does not seem to be any way to avoid this discretionary fee if IP Australia deems necessary. One way to prevent examiners from overseeing relevant foreign search results is perhaps for applicants to voluntarily disclose search results. How often IP Australia will require applicants to pay this additional search fee remains to be seen.
In summary, the preliminary search and opinion is not expected to be a popular request given that there are more attractive alternatives. It may be suitable in limited situations where patent applicants are eager to receive some early indication of patentability for a large number of claims, but wish to keep their applications pending for as long as possible by not formally entering their applications into examination. IP Australia’s new and discretionary search fee seems almost unavoidable for applications that have no International or foreign search results available. Applicants not under this category may wish to avoid paying the fee unnecessarily by making the examiners aware of any relevant search results.