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Australian Patent Prosecution Presentation

7 September 2017

Patent applicants prone to international patent filings generally face decisions regarding when to file international and foreign counterpart applications well before having the benefit of prior art search results indicative of the actual patentability of a putative invention. An available option to help address this issue is an application for an Australian Innovation Patent. Unlike the vast majority of patent applications filed around the world, an application for an Innovation Patent receives a substantive examination (albeit for innovation only) within a matter of weeks, if requested, and a patent can issue within a matter of a few months. This is well in advance of the deadline for filing a corresponding Patent Cooperation Treaty application, and the associated foreign correspondent applications.

This application process is distinct from, for example, a U.S. Provisional Application, which does not receive any examination, and an application for a Chinese Utility Model, which is examined for formalities only. In short, an application for an Australian Innovation Patent can work as a filter for PCT filings - inventions that turn out not to be innovative need not result in the expense of a PCT application therefor.

Further, inventions that are innovative will result in an issued, substantively examined patent in a relatively expedited fashion. This may be of particular importance to start up companies looking to attract early stage investment.
Finally, through divisional prosecution in Australia, further application may be made for the more traditional invention patent, which then allows the applicant to avail itself of the Patent Prosecution Highway.

While a Chinese patent applicant may be required to file a patent application first in China, such applicant should consider filing for an innovation patent shortly thereafter in Australia as a means for narrowing the universe of PCT applications to be filed, while at the same time increasing the chances of obtaining early-issued intellectual assets.