10 February 2011

Early Patent Enforcement

I was recently instructed to enter national phase in Australia and to do my best to get acceptance by the end of 2010.  For those readers not familiar with Australian practice, acceptance is effectively an acknowledgement by the examiner that the invention defined by the claims qualifies for patent protection.  Here's a flowchart.  The reason for the urgency was that the applicant was in the throes of finalising a licence agreement.  The licensee would only sign if there was a favourable examination report by an examining office. The task was not an easy one, since I was instructed early in December 2010.

My advice was to identify material in the specification that was descriptive of the product to be commercialized in Australia.  Claims that are limited in scope to that material could then be crafted and filed together with a divisional application for a patent based on the parent application.  I prepared a memorandum describing how the claims, in their amended form, defined an invention that was both novel and inventive and I filed that together with a request for expedited examination, explaining the need for the urgency.

As a reflection of the good service I've always received from IP Australia, I received a first report within about 2 weeks.  Two days later, I filed a response.  The Notice of Acceptance issued on 24 December 2010.

Of course, you won't always have an outcome like that.  But this is a good example of how the divisional process together with the option of requesting expedited examination can be used to achieve early acceptance.

A problem with this approach is that once the application is accepted, it still has to be published for a period of 3 months for opposition purposes before the Deed of Letters Patent can be issued.

This is where the innovation patent comes in. See here for a number of posts on the innovation patent. And here is a flowchart.

It is possible to file a divisional application from a pending international application or a pending application for a standard patent in Australia.  In the case of the international application, that application must be published before you do so.

Once you file a divisional for an innovation patent, it will be granted, without substantive examination, within about three to four weeks.  In that state, it cannot be enforced.  It is then necessary to request certification.  This involves an examination of the application.  If successful the examination will be certified.  This can take as little as just one month from filing the request.  It follows that in an ideal situation, you will be in a condition to enforce your rights in as little as two months.  Realistically, you should budget for about three months from the date of filing the application for the innovation patent.

As with the divisional for the standard patent, the claims for the innovation patent can be crafted to cover the product in question.  That product could be the product you wish to commercialize or could be an infringing product.

It's important to bear in mind that the claims prepared for the innovation patent must be "fairly based" on the material in the parent application.  See here for a number of posts on the meaning of "fairly based".  It follows that you need to be sure that the infringing product is actually covered by the parent application.

It does appear that the authorities are regarding this strategy with some hostility.  The innovation patent was established to help the "little guy" get patent protection with as little fuss as possible.  As with most attempts to "help" the authorities have miscalculated somewhat.  The courts have also recently being interpreting the scope of innovation patents a bit more stringently even though there is no basis in the Patents Act for doing so.  These are indications that the Act may change soon, closing the door on this strategy.

You should consider this option sooner rather than later if you happen to have a pending international application or application for a standard patent in Australia.

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