IP Australia is currently trialling a pre-examination notification process for patent applicants. Under this new trial, which commenced on 25 January 2016 and applies to approximately 1000 pending applications, IP Australia will issue a pre-examination notification two months before a patent application is to undergo formal examination. This notification provides the applicant with two months to make pre-examination amendments to the application as well as written submissions for the examiner’s consideration prior to examination of the patent application.
The pre-examination notifications list any search and examination reports that have already issued on corresponding overseas applications, such as European, U.S. or PCT applications. In many circumstances, first examination reports in Australia simply reflect any objections already raised on corresponding overseas applications. Thus, this notification may serve as a helpful guide for identifying documents that are likely to be cited in a first examination report. With this pre-examination report available, appropriate amendments can therefore be pre-emptively made to expedite acceptance and increase efficiency during the examination process.
If there are no such existing search and examination reports then the notification will simply advise of impending examination and invite the applicant to consider any amendments which may result in a more focused examination process.
In many cases, the issuance of a first examination report is the first reminder for an applicant in multiple jurisdictions that their Australian patent application requires attention in light of the progress of their corresponding foreign applications. As a result, a pre-examination notification may serve as a timely reminder for an applicant to consider how they may wish to proceed with their Australian patent application in light of any difficulties or successes they may have had in other jurisdictions.
In the context of the shortened 12 month timeframe within which to gain acceptance from the issuance of a first examination report[1], the pre-examination notification process should help applicants reduce the number of examination reports and responses for an application, leading to an earlier patent grant and reducing overall costs.
During this trial period we will of course forward to applicants any pre-examination notifications that we receive in a timely fashion and will be delighted to provide advice on how to respond.
[1] Introduced in Australia through the 2013 ‘Raising the Bar’ amendments to the Patents Act.