Say G’day to the International Type Search Report (ITSR) – supporting your global patent filing strategy

The favourable turnaround time to obtain the ITSR gives the applicant early insights into the prospects of future PCT and convention filings, and helps to maximise the time available in which to make informed decisions regarding prosecution strategies.

An ITSR can provide key guidance for those embarking on the patent prosecution track. Prior art and perceived issues with a filed provisional patent application (including support and/or enablement/written description) can be identified at an early stage. By being forewarned about potential validity problems, an applicant can make informed choices to adapt and update any filing strategy or patent specification before they commit to filing and finalising the content and disclosure in one or more complete applications.

Formalities and foreign filing considerations

There are no nationality or residency requirements for filing Australian provisional applications, and inventors do not need to be listed.

Before filing any application in Australia, applicants should consider:

• foreign filing restrictions in countries where at least one applicant and/or inventor is a national or resident, or where an invention was at least partially conceived
• any implications with regards to withdrawing and re-filing priority applications, especially in situations where priority applications are filed in at least two different jurisdictions.

For U.S. based applicants and inventors, once a foreign filing license is obtained, an Australian provisional application can be filed with a preferred claim set for searching, along with an ITSR request.

ITSR process and timing

An ITSR request can be filed at any time whilst an Australian provisional patent application is pending, in conjunction with payment of the official fee (AUD950). Neither the request nor the ITSR per se are disclosed to the public on the Australian patent register (AusPat).

IP Australia aim to issue an ITSR within six to eight weeks of a request. The efficient process can provide early insights into prosecution prospects within the one year priority period. The ITSR is usually issued by the same set of senior patent examiners that prepare International Search Reports and Written Opinions on behalf of IP Australia, which is a testament to the high quality of the results that can be obtained via an ITSR.

In situations where IP Australia is elected as the International Search Authority for corresponding PCT applications, up to 50% of the official search fee can be refunded where the results of an ITSR are utilised.

Claims

An assortment of claim formats can be used in Australia. Methods of medical treatment and Swiss-style claims are acceptable, with the local courts confirming that each claim type protects distinct aspects (and against potential infringing actions) of an invention. Therefore, Australia can be used to evaluate the validity of a diverse set of claims. FB Rice can provide advice on the appropriate types of supported claims available for an invention (for example by modifying any EPC2000 style claims to an appropriate format), adapting a claim set to align with current best practice and maximising the potential benefits of the ITSR.

There is no limit on the number of independent claims which can be recited in an Australian provisional patent application, and the examiner will consider the question of unity of invention in the same way as for a normal international search. Where the examiner finds that multiple inventions are present, the applicant will be invited to comment and choose which of the inventions should be searched. If the applicant elects multiple inventions, they must then pay the official fee for each additional search.

Key takeaways

• The Australian ITSR is a cost-effective tool that can complement other searches and/or efforts to develop a robust patent portfolio and prosecution strategy.
• There are no residency requirements, hence foreign applicants are able to take advantage of this search in Australia, in addition to complying with any other filing requirements placed on them in other jurisdictions (including in relation to maintaining priority dates).
• The ITSR on Australian provisional application is kept strictly confidential and typically issues within six to eight weeks, and can identify prior art documents at an early stage of the patent prosecution process.
• As Australian practice allows various claim formats (including method of treatment claims) multiple distinct aspects of an invention can be captured and examined to assess the validity of the claims before finalising the content for one or more complete patent applications. FB Rice attorneys can provide advice on appropriate claim formats in view of current local requirements.