Five tips to minimise your Australian patent prosecution costs

Five tips to minimise your Australian patent prosecution costs

Five tips to minimise your Australian patent prosecution costs

This article first appeared in the March 2009 Chinese-language edition of Managing Intellectual Property. To read the Chinese language version, click here (PDF).

In the midst of a global economic crisis, many have looked to China in the hope that the export boom is significant enough to lessen the impact. However, China is facing similar problems to other major countries.

In these leaner times, many companies including Chinese companies are looking for opportunities to reduce costs associated with protecting innovation overseas. To fully realise these opportunities the importance of understanding national patent systems cannot be overstated. The following five tips may help to make the best use of the Australian patent system and can contribute to cost savings during Australian patent prosecution.

Tip #1: Get in shape

It is common for a specification suitable for Europe or the US to be used in support of an Australian application, but cost savings can result if the specification is well-suited to Australian practice. Such a specification would:

  • not have reference numerals in the claims;
  • not have characterising-style claims that refer to features that are inessential to the invention in the pre-characterising clause;
  • not have object clause(s) that are not satisfied by the invention as broadly defined;
  • not have references to unpublished information, such as unpublished patent applications.

Tip #2: Be the early bird

The Australian patent examination process differs from other jurisdictions. The generation of a first examination report initiates a 21 month period within which all outstanding issues must be resolved. Any response to an examination report lodged within 12 months of the date of the first report will not attract official fees, so it is advantageous to respond early. A timely response will also avoid the need for reminders from the Australian associate.

Where substantive objections are raised during examination, it can be tempting to amend the claims to bring them into line with those allowed in e.g. the US or Europe. However, broader claims are often allowable in Australia when compared with other jurisdictions. The reasons for this include that there is currently no requirement under Australian law for a claim be enabled over its full scope and that the threshold for inventive step is reasonably low.

Tip #3: Be clearly entitled

It is crucial that an Australian patent be granted to an entitled legal person. Before grant, a Notice of Entitlement must be filed showing:

  • how the applicant(s) derive the right to the invention from the inventor(s); and
  • how the applicant(s) have the right to rely on any priority application(s).

It can save time and money, and possible problems post-grant, if this information is provided early on.

Tip #4: Trim the claims

Keeping the claim number low will avoid incurring excess claim fees. Currently excess claim fees are payable on every claim in excess of 20 at acceptance. Deleting less important dependant claims and/or the use of multiple claim dependencies can assist in reducing the claim number.

Tip #5: Innovate towards lower costs

Australia has a two-tier patent system including the innovation patent. The innovation patent has the benefit of a lower threshold of obviousness, but has a maximum of 5 claims and a shorter term (8 years). An innovation patent can be a financially attractive alternative to a standard patent since it can provide quick, cheap patent rights that are granted without examination. The rights are only enforceable once the innovation patent has been examined and certified. However, this means that costs associated with the examination process in its entirety need only be incurred if an enforceable patent is required.