Changes to Australian patent law and practice that came into force with the commencement of the Raising the Bar Act on 15 April 2013 mean some significant changes to time frames and deadlines associated with patent examination in Australia. These legislative changes are starting to come into effect, as the Australian Patent Office works through an increased backlog due to a massive volume of examination requests filed prior to commencement of the Raising the Bar Act.
This article provides a guide to how the time frames and deadlines have changed, what sort of time frames we can look forward to in the short to medium term and what actions can be taken to affect the time frames.
Deadline to Request Examination
Under Australian practice, a request for examination, and associated examination fee of AU$490, must be paid prior to examination commencing.
There is an overriding deadline of five years from the Australian filing date (the International filing date for PCT national phase applications) by which examination must be requested. That overriding deadline, however, rarely if ever applies, as the Australian Patent Office routinely sets an earlier deadline with the issue of a Direction to Request Examination. The Direction to Request Examination is used by the Australian Patent Office as a tool to manage its backlogs, issuing Directions (generally by technology) depending upon the backlog of examination in the particular examination group.
Prior to commencement of the Raising the Bar Act, Directions to Request Examination set a six month deadline to request examination. All Directions issued since commencement of the Raising the Bar Act, however, now set a shortened two month deadline to request examination. If examination is not requested by the deadline the application will lapse.
A massive number of examination requests were filed within the month and days leading up to commencement of the Raising the Bar Act, resulting in a large backlog of applications to be examined. As a result, the Australian Patent Office effectively stopped issuing Directions toward the end of 2012. Directions have since generally only been issuing approximately 57 months from the filing date, solely to avoid applicants being caught out and not taking note of the overriding five year examination request deadline.
The Australian Patent Office expects to have reduced the backlog, having all pre-Raising the Bar applications examined, by July 2014.
With this reduction in the backlogs last month the Australian Patent Office “turned the tap on”, starting to issue Directions to Request Examination on a more regular basis in most technologies.
As the examination backlogs further reduce, we anticipate Directions to Request Examination to issue around 44 to 48 months from the priority date, depending upon technology, although the Australian Patent Office does hope to issue Directions at an earlier date in the future.
Over the last couple of years there has typically been a delay of between about 9 to 15 months after having filed a request for examination, depending upon technology, until issue of an Examiner’s First Report. This delay has recently been increasing with the large number of examination requests filed leading up to commencement of the Raising the Bar Act. However, once this “bulge” of applications is examined, the Australian Patent Office expects to be able to reduce the examination delay to approximately 6 months in most technologies. The largest examination delays are currently being experienced in mechanical technologies, with the Australian Patent Office having had some difficulty in recruiting sufficient examiners.
Strategies for Bringing Examination Forward
The first step that can be taken to ensure examination occurs at an earlier date is to request examination prior to a Direction to Request Examination issuing. Examination may be filed at any earlier time, including at lodgement or national phase entry with no additional fee.
Examination delays can be greatly reduced, typically to a one to three month period, by asking that examination be expedited. Whilst any request that examination be expedited must be supported with a reason, the Australian Patent Office accepts very simple reasons, without the requirement for any onerous support such as is required for a Petition to Make Special in the United States. Some simple standard reasons, indicated as acceptable by the Australian Patent Office, include “commercial reasons”, “potential infringement”, “licensing reasons” and “green technology”.
Examination may also be expedited under the new Global Patent Prosecution Highway (“Global PPH”) where there is a qualifying corresponding application that has been successfully examined before any of various foreign patent offices, including those of Canada, Denmark, Hungary, Iceland, Israel, Finland, Japan, South Korea, Norway, Portugal, Russia, Spain, Sweden, United Kingdom, United States as well as the Nordic Patent Institute. There are, however, limitations that apply for applications to qualify for the Global PPH. Supporting documentation is also required, particularly relating to claim correspondence between the Australian and foreign applications.
Given that the Australian Patent Office processes and examines applications under regular expedited examination in the same way as those under the Global PPH, we generally recommend requesting expedited examination rather than participation in the Global PPH before the Australian Patent Office.
Under Australian practice, rather than setting a deadline for filing a response to each Examiner’s Report, the issuance of an Examiner’s First Report sets a deadline by which the application must be accepted (i.e. allowed), irrespective of the number of Examiner’s Reports that issue.
For applications in respect of which a request for examination was filed before commencement of the Raising the Bar Act (i.e. before 15 April 2013), a 21 month acceptance deadline applies. Due to the backlog in examination, there are still a significant number of these pre-Raising the Bar applications that have not as yet had an Examiner’s First Report issue. For such applications, whilst a total 21 month period is provided to secure acceptance, any response filed after an initial 12 month period attracts a late response fee of AU$110 per month beyond the 12 month nominal deadline.
For all applications in respect of which a request for examination was filed after commencement of the Raising the Bar Act, a reduced 12 month deadline for acceptance is set. There is no provision for extending that deadline with the payment of late response fees. We are starting to see Examiners reports for these applications issue and, accordingly, care should be taken to ensure the correct deadlines are docketed for the two different deadlines that may apply to different applications.