The spread of COVID-19 is having a profound impact on the global economy. During this difficult and highly unpredictable time many businesses and individuals are reviewing their IP portfolio due to diminishing cash reserves and restricted access to capital.
This is the first instalment in a series of articles outlining practical tips to help reduce IP portfolio expenses without compromising the protection of your IP.
Tip 1: Delay filing a patent application
If no patent application has been filed, then we simply recommend delaying the filing. This does not mean that your invention is not protected. Keeping your invention as a trade secret is a perfectly appropriate strategy providing you do not disclose it to anyone without a confidentiality agreement in place. One advantage of this tip is that the non-disclosure period can be used to perform further experiments or refinements before filing a patent application, which will improve the quality of the patent application when it is filed.
The disadvantage to this strategy is that there is a risk of a third party filing a patent application for a similar invention and obtaining an earlier priority date which can therefore act as prior art document against your application. There is also a risk to the validity of your potential patent if accidental or ill-timed disclosure of the invention to any third party takes place.
Tip 2: File a provisional patent application rather than an innovation patent application
Australia has a two-tier patent system at present: a standard patent applications (inclusive of the provisional patent application) and innovation patent applications (these to be abolished in 2021). If you believe a patent application must be filed during the next few months (because there is going to be a publication) then we recommend filing a provisional patent application rather than an innovation patent application. The benefit of a provisional patent application over the innovation patent application is that it does not publish (innovation patent applications do publish after grant - typically only a few weeks after filing). This enables you to use Tip 1 above i.e. if you don't proceed you won't have disclosed your invention, but it also "holds your spot" in that if you continue with the process any disclosure after the filing date cannot be used against your application.
The downside of a provisional patent application compared to an innovation patent application is that you don't have an enforceable right. Innovation patents grant quickly so it is possible (after certification) to have rights within a few months. Filing costs for provisional applications are relatively inexpensive. You then have 12 months from the provisional filing date - to lodge a complete application in Australia or overseas.
Tip 3: Withdrawing and refiling an application
This would apply if you have already filed a provisional patent application. During the 12 months period to lodge a complete application e.g. PCT application, you can choose to 'abandon' a provisional application to reduce costs by either:
- allowing the provisional application to naturally lapse i.e. pass the 12 month period; or
- submitting a request to the Australian Patent Office to 'withdraw' the application during this time period.
The provisional application can be immediately refiled to restart the 12 month period or when cash flow improves. The advantage with this strategy, is that the provisional application's contents remain confidential and minimal costs are involved.
The disadvantages of this approach include:
- losing the 'priority date' (filing date) of the original provisional application;
- a third party filing a patent application for a similar invention with an earlier priority date would act as a prior art document; and
- a risk of the validity being compromised from accidental or ill-timed disclosure of the invention to any third party.
Tip 4: Enforceable rights that also keeps your invention confidential
If you need to file a patent application as in Tip 2, but want to (i) keep it confidential like a provisional patent application and (ii) retain the flexibility to quickly switch to enforceable rights then consider filing a complete application at first instance. A complete application at first instance will be a bit more expensive than a provisional application, but (a) it does not publish (just like the provisional patent application) (b) it can be used as a priority document like a provisional patent application and (c) you can quickly file an innovation patent divisional application to chase an infringer which will have the priority date of the complete application.
Finally, if before 18 months from the filing date (publication date) you decide not to continue you can, like the provisional application, withdraw the application and it will not be disclosed to the general public.
To discuss any of the above in greater detail, or seek further advice about what your business can do to free up capital without exposing your IP portfolio to unnecessary risk, please contact one of the authors or via firstname.lastname@example.org
Co-Author - Stuart Boyer, Patent Attorney