14 August, 2008

Accelerated Examination of Australian Patent Applications: Quick as a Flash!!

Accelerated Examination of Australian Patent Applications: Quick as a Flash!!

Australian patent law has for some time now had a provision (regulation 3.17(2)) where examination of a patent application can be expedited at the applicant’s request. The Commissioner of Patents must be satisfied that expedited examination is in the public interest, or there are special circumstances that make it desirable to do so. Practically speaking, expedited examination will be undertaken by the Patent Office where the applicant explains that there are concerns about possible infringement or there are current licensing negotiations involving the subject patent application. In fact, it is enough simply to inform the Commissioner that there are “commercial reasons” for requesting expedited examination.

In our experience an applicant can expect to receive a first official examination report within about 10-15 weeks by this route.

The Australian Patent Office (“IPAustralia”) recently entered into an agreement with the USPTO to establish the Patent Prosecution Highway Pilot Program for accelerated examination. The PPH Pilot Program allows applicants to leverage allowable claims of a US application to accelerate examination of a corresponding Australian application. The Australian claims must “sufficiently correspond” with one or more of the claims of the allowable (or patented) claims of the corresponding US application (or patent), or be of narrower scope. Effectively, the Australian claims need to be of the same or similar scope to the corresponding US claims. Importantly, the US and Australian applications must be linked by a common US priority claim or have a common initial filing date (e.g., PCT in the first instance).

The allowability of the US claims can be indicated by an Office Action (including the types Non-final Rejection, Final Rejection, ex parte Quayle, and Notice of Allowability). The Australian application must not already have been examined by the Australian Patent Office.

There are specific forms and other documents that need to be submitted to the Australian Patent Office in support of use of the PPH Pilot Program. These include a “claims correspondence table”, and either copies of, or references to publicly available USPTO documents evidencing allowance or issue.

Our firm has made use of the PPH Pilot Program, and in the first such case, obtained a (clear) examination report only 2 weeks after filing the request for expedited examination. True, this is a small sample set, but indications are that use of the PPH Pilot Program will offer applicants the possibility of truly accelerated examination in Australia.

The Pilot Program will run till 14 April 2009, and may be extended depending upon demand.

Author: Robert Miller, Principal

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