Patent examination options in Australia

In order for an Australian standard patent application to be examined, the applicant must formally request examination.?Such a request must be filed within five years from the effective filing date of the application or within two months of receiving an official direction from the Australian Patent Office.?The latter is usually the case as the Patent Office is currently issuing directions around four years from the effective filing date.?

If examination is not requested by the relevant deadline, the application will be deemed to be abandoned.

Requesting standard examination

If an applicant is not in a hurry to gain a granted patent, then a request for standard examination can be filed.?At present, a first examination report (or Notice of Acceptance) will usually issue between 12 to 18 months after examination is requested.?However, the timing depends on caseloads at the Patent Office and varies amongst technology fields.

It is standard practice to file a request for postponement of acceptance when requesting standard examination.?This will ensure that the application does not proceed directly to acceptance without an opportunity to lodge amendments to the specification.

Requesting expedited examination

Examination under the Global Patent Prosecution Highway (PPH) based on a clear IPRP or an allowed/granted patent application issued by a participating patent office (see Global PPH).?Australia also participates in a PPH program with the European Patent Office.?Please note that all claims in the Australian application must be sufficiently correspond to the allowable/patentable claims.?Amendments for conformity with Australian practice are permitted (e.g., the inclusion of product-by process claims, Swiss-style claims, and multiple dependencies) but a claim which introduces a new/different category of claims to those claims indicated as allowable/patentable is generally not considered to sufficiently correspond.?Requesting examination under the PPH will result in the first examination report (or Notice of Acceptance) issuing within four to eight weeks.

An alternative to requesting examination under the PPH is to request expedited examination, which will also result in the first examination report (or Notice of Acceptance) issuing within four to eight weeks.?In order to request expedited examination, it is only necessary to state that it is required for commercial reasons, the applicant is a small to medium sized enterprise (SME), the application relates to green technology, infringement is occurring, or there are licensing reasons (supporting evidence is not required).?Please note that requesting expedited examination may be preferable to requesting examination under the PPH, as it allows for more flexibility with the type of claims and the claim scope.?This may be advantageous if amendments were required during foreign prosecution that may not be applicable to Australia (e.g., overcome a restriction requirement or an inventive step objection resulting from mosaicing of prior art).

Examination

Issuance of the first examination report sets a 12-month deadline for overcoming all objections and placing the application in order for acceptance.?It is important to note that this deadline is not merely for responding and is inclusive of any time taken by the Australian Patent Office to consider submissions and possible issue further examination reports.?If this application is not accepted by this deadline, it will irrevocably lapse (a divisional application may be filed to maintain a pending application).

Under current practice, Examiners will process a response to an examination report in about 20 working days for both standard and expedited examination, and will expedite consideration of responses filed close to the acceptance deadline.

Acceptance and grant

Once the application is in order for acceptance, a Notice of Acceptance will issue and acceptance fees will be payable.?The acceptance fees include excess claim fees based on the number of claims exceeding 20 at the time of acceptance (multiply dependent claims are allowable in Australia and count as a single claim for the purposes of calculating claim fees).

Acceptance of the application is published in the official journal, which commences a three-month opposition period during which any interested third party may oppose the granting of the patent.?

Divisional applications may be filed any time up until the end of the opposition period to pursue subject matter not successfully prosecuted in the application or as a precaution if there is a chance of opposition.

Assuming no opposition to grant is filed, the electronic Certificate of Grant will issue around one month after the expiry of the three-month opposition period.

Accelerating grant of a patent

The following approach may result in a granted Australian patent issuing within six months of filing.

At the time of filing the patent application (or entering national phase), expedited examination should be requested for commercial reasons (without postponement of acceptance) and amendments the claims and specification files to conform them to Australian practice, overcome any objections raised in international phase (or during prosecution of corresponding applications) and reduce the number of claims to 20 or less.?

Within four to eight weeks, the application will be accepted if no objections are raised.?If an examination report issues, a response should be promptly filed and the Examiner will accept the application within 20 working days or issue a further examination report.?Once the application is accepted, the Certificate of Grant will issue within four months if no opposition is filed.