As you may be aware, the option for an applicant to request modified examination based on a corresponding granted patent in a foreign country was abolished when the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 took effect on 15 April 2013.
However, under the right circumstances, applicants that filed a request for modified examination prior to 15 April 2013 can still modify (amend) their modified examination request to be based on a different granted foreign patent. This is in accordance with a practice note under section 2.14.4.1 of the Australian Examiners Manual, which recites “The request may be amended to change the granted foreign patent upon which modified examination is based”.
The above strategy may be of interest to applicants that, e.g., have a US continuation application that did not proceed to grant until after the commencement of the Raising the Bar Act but that contains claims that are of higher commercial value to the applicant (or a licensee) than the claims of the foreign patent upon which the modified examination was originally based.
Of course, instead of waiting for the continuation application to proceed to grant, the applicant has the option of pursuing the claims of interest by filing a request to convert from modified to ordinary examination and paying another examination fee. Alternatively, a divisional application directed to the claims of interest can be filed within three months of acceptance of the parent. However, given that any divisional application now filed will be examined under the new, more stringent, laws that were brought in by the “Raising the Bar Act”, this may be a more risky approach to take.
In view of the above, modification of an existing modified examination request may be an attractive and cost-effective strategy for an applicant to consider.