Are we there yet? Expediting Examination of Patents in Australia

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IPAustralia recently issued updated guidance on patent examination response times.  

For an Australian Patent Application to proceed to grant it must first undergo examination.  A request must be filed with IPAustralia, along with the official fee, for the application to be examined. Examination may be requested voluntarily at any time, but must be requested within five years of the filing date of the application or within two months of a Direction by IPAustralia, whichever occurs first.

Time Frames for Regular Examination

Under the new guidance, IPAustralia will issue a first examination report within 12 months of requesting examination.  Furthermore, any response to an examination report will be considered within 4 weeks of filing. 

If there are no remaining grounds for rejecting the application then acceptance will be published for opposition purposes and in a little more than 3 months after publication of acceptance the application will proceed to become a granted patent.  

Obtaining a granted patent can be important for a number of reasons.  One major reason is that proceedings for patent infringement cannot be initiated in the courts until a patent is granted.  Furthermore, there may be other commercial imperatives such as a potential license or sale of an invention.

Expedited Examination

It is possible to request expedited examination of an Australian patent application in certain circumstances.  If IPAustralia expedites examination it will issue a first examination report, or an acceptance notice, within 8 weeks of requesting examination.  This can potentially shorten the time to obtain a granted patent by up to 10 months.

There are no additional official fees for requesting expedited examination.  Under Regulation 3.17 the Commissioner of Patents has a discretion to grant a request to expedite examination if it is in the public interest or there are special circumstances that make it desirable.  This is a fairly broad discretion that could include various types of circumstances.

IPAustralia’s Patent Examiner’s Manual provided in 2.13.4.3 that such circumstances may include:

a)       the invention is in a field of technology that is environmentally beneficial (‘green’ technology);

b)      the applicant is a small to medium sized enterprise (SME);

c)       a valid request has been made under a Global Patent Prosecution Highway (GPPH) agreement; or

d)      that there are pressing commercial reasons, such as the existence of a potential infringement or a potential license or sale of the technology.

Small and Medium Sized Businesses (SMEs)

Accordingly, if a patent applicant is a small or medium sized business, whether based in Australia or overseas, IPAustralia will consider granting expedited examination. IPAustralia will typically not seek to verify any claim regarding the claimed size of the business and will rely on representations from the applicant.

Green Technology

Otherwise, if the invention relates to a technology that saves on energy or materials or has an environmental benefit then this may also qualify.  

Global Patent Prosecution Highway

If a corresponding patent application overseas has been examined and at least one claim has been found to be novel and inventive then this may provide a basis for a request under the GPPH.

Infringement, License or Sale of Invention

Finally, if there are other commercial reasons for requesting expedited examination, such as due to the existence of a potential infringement or a commercial transaction (e.g., license or sale of technology),then this may also provide a valid basis. Again, IPAustralia will likely rely on statements from the applicant as to the circumstances.

If you are interested in learning more about the procedures for expediting examination of a patent application in Australia then don’t hesitate to ask Daniel McKinley.

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