Before diving into costly international patent applications, it's crucial to understand your options, and how to assess the viability of achieving a granted patent without overspending. This guide walks you through the strategic use of provisional patent applications, the Patent Cooperation Treaty (PCT), and Australia's International Type Search (ITS).
A provisional patent application is often the first step in the long journey to obtaining a granted patent in a country of interest. The Paris Convention for the Protection of Industrial Property1 provides that a provisional patent application filed in one country (a "basic" application) can establish the priority date for a complete (Paris Convention) application filed in another country, provided the complete application is filed within 12 months of the provisional application.
Filing a provisional application provides the opportunity to assess commercial potential before committing to one or more complete applications, thereby delaying costs.
Advantages of the Patent Cooperation Treaty (PCT) system
If protection of the invention is required in only a few countries, it is usually most cost effective to file a complete application directly into those countries and claim priority to any provisional patent application which has been filed. Alternatively, where an applicant requires more than a few countries, it is more common to file a PCT patent application (and claim priority). It is also possible to pursue Convention applications in parallel with a PCT application.
The strategy of filing Convention applications incurs the relatively expensive filing costs sooner, compared to filing a PCT application, where the major filing costs are deferred for 18 months – a period referred to as the International Phase. In other words, the PCT application takes the place of the individual foreign patent applications that would otherwise have been required.
After the International Phase, in a period referred to as the National/Regional Phase, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought.
Pros:
- Defers the cost of national phase applications.
- Provides centralised prosecution and the patent application is automatically subject to both search and examination2, thereby providing some information for assessing the prospects of obtaining a granted patent and the potential scope of protection, before the major filing and prosecution costs are incurred.
- Can be used to reduce the number of objections during national phase prosecutions, which can lower overall prosecution costs.
Cons:
- The PCT application incurs increased overall costs (due to the PCT filing cost), but may be more cost effective overall due to streamlined prosecutions.
The PCT system can also be used to manage risk. For example, if the invention disclosed in the PCT application is subsequently found to be unpatentable in view of the prior art, the PCT application can be withdrawn, thereby avoiding the national phase filing costs. There are a number of advantages to withdrawal:
- if the application is withdrawn prior to publication, which automatically occurs 18 months after the priority date, it is possible to keep the entire disclosure confidential.
- an applicant can therefore "test the waters" for patentability and obtain some clarity on whether to keep the invention as a trade secret. Pursuing a patent application does not immediately undermine the ability to protect a trade secret – that decision point comes once the priority date is secured and the invention and its commercial potential is better understood.
- a further patent application directed to a new invention can be subsequently filed without negative patentability consequences of the earlier PCT application publication.
Utilising Australia's International Type Search (ITS)
For applicants wishing to test the waters for patentability, an alternative is to file a provisional patent application and then seek a search/opinion on the provisional application by way of Australia's International Type Search (also known as an Article 15(5) International Search).
Because the ITS follows PCT rules, the Patent Office applies the same high standards used when conducting searches for International (PCT).
The purpose of the ITS is to provide the prospective PCT applicant with a list of prior art documents relevant to the field of technology of the invention, and provides an indication of the novelty of the claims and whether the claims may possess an inventive step.
If the prospects of patentability are low, this may affect the decision to file a PCT application. Instead, the provisional patent application may be abandoned to keep the information confidential in the form of a trade secret. This may especially be the case where arguing for an inventive step is difficult. For example:
- If the invention is a series of process steps which cannot be reverse engineered, then keeping the process steps as a trade secret may be an appropriate course of action.
- A novel apparatus which provides some advantage, and which is used within a closed reactor. If the apparatus is new but is an obvious adaptation of prior art solutions the prospects of patentability may be slim, but there may be good prospects of keeping the details of the apparatus as a trade secret.
Alternatively, if the lifespan of the product has potential to be longer than the term of patent protection (20yrs), trade secret protection might offer a longer period of protection – provided it can be maintained a secret (and it continues to have a commercial value due to its secrecy) during that period.
If the ITS is requested soon after the provisional application is filed, the applicant will have that relevant prior art available much sooner than compared to filing the PCT application and awaiting the ISR/WO. If relevant prior art comes to light which is detrimental to patentability, amendments can be made to the patent specification intended for the complete application to attempt to overcome the prior art.
It may also be possible to do additional research after the ITS is received and have additional data ready by the complete stage, which could boost the prospects of patentability. The filing of a complete application is the last time in the process where new content may be added to the patent application.
Furthermore, if the applicant decided to abandon the provisional application, any effort expended on drafting the provisional specification may not be wasted, as any improvement invention could likely build upon that patent specification.
Practical and cost considerations
The cost of requesting ITS in 2025 is AU$1100, which is significantly cheaper than the PCT searching fee of AU$2200, and entitles the applicant to a partial refund of the PCT searching fee if the PCT application is subsequently filed with IP Australia.
The Australian Patent Office also gives international type searches their highest priority among all searching, aiming for results returned to the applicant within 6 weeks. Typically, the searching is most beneficial if requested shortly after the provisional patent application is filed, but in any event the search must be requested within 10 months of the filing date of the provisional application.
While requesting an ITS does bring forward some costs for applicants filing patent applications, this may be outweighed by providing early insights into the prospects for patentability.
The ITS may raise a number of objections, alleging that one or more claims lack (a) novelty, (b) an inventive step, (c) are unclear, (d) are not enabled over their entire scope, or (d) lack support. There is no guarantee that the ITS will identify each and every document of relevance, but nonetheless is a useful tool to provide early insights into the prospects for patentability.
It is important to note that the ITS is not intended to be a final or binding determination of the validity of an application and does not replace the usual substantive examination process. It also remains confidential unless a complete application is filed.
How we can help
The ITS can be a cost-effective way to determine prior art relevant to an invention disclosed in a provisional application, and as highlighted above, can forewarn an applicant of potential patentability issues. This can enable an applicant to adapt their filing strategy before filing the complete patent application, including considering whether to keep the development confidential as a trade secret.
Applicants might consider requesting an ITS when:
- there has been little to no prior art searching
- early insight into patentability is useful
- considering whether patent or trade secret protection is most appropriate.
If you are considering filing a provisional patent application and wish to explore the benefits of requesting ITS, reach out to our experienced team who can assist with drafting a robust provisional specification and guide you through the ITS process.
Footnotes
1 https://www.wipo.int/treaties/en/ip/paris/
2 preparation of the International Search Report
(ISR) and the Written Opinion
(WO) by the International Search Authority
(ISA),
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
