The ‘Acceptance Deadline’ trap – how to avoid costly continuation applications in Australia and NZ

When filing for a patent in any country, for both local companies and patent attorneys based overseas, the question of deadlines can be one of the easiest and most costly parts of an application to get wrong. Filing an application in any jurisdiction involves a strict list of deadlines, however in countries such as Australia and New Zealand, innovators and overseas attorneys face an additional complication in the form of the ‘acceptance deadline’.

After a patent application has been filed, it is generally examined by the Patent Office in the country in which it was filed. This leads to the issuance of an ‘Examination Report’, which describes any reservations the Office has about granting a patent, and any changes that the Examiner believes need to be made to allow the application to be accepted. In most countries, the next deadline faced by applicants after this report has been issued is a ‘response deadline’. In the United States for example, an initial response deadline is established three months from the notification date listed on a United States Patent and Trademark Office (USPTO) office action.  That means that, to be considered timely, a patent applicant must simply file a response at the USPTO by the deadline.

However, there are a few countries, including Australia, New Zealand, India and South Africa, which employ an ‘acceptance deadline’, rather than a response deadline. In these countries there is a deadline set after the first examination report has been issued, before which the patent application must be accepted.    The issue in these countries then is not simply that a response must be filed by the deadline, but rather that the Examiner must receive the applicant’s response, have time to review it and subsequently accept (i.e., allow) the application, all before the deadline.

For example, in Australia[1], the application must be placed in order for acceptance within 12 months from the date of a first examination report issued by the patent office.  If an application is not in order for acceptance by that time, then a continuation application (called a divisional application in Australia) must be filed by the deadline in order to keep rights to the invention alive. As a result of the need to file what may be otherwise avoidable divisional applications, failure to take this type of deadline into account can be costly and stressful for both the applicant and the practitioner.

For patent practitioners in jurisdictions accustomed to response deadlines this issue can, and almost inevitably does, lead to docketing issues due to misunderstanding the nature of the deadline, or failing to take it into account in existing reminder systems.

A recommended practice for handling these types of acceptance deadlines is to implement timely “dummy” reminders. For example, when dealing with an Australian application, it is prudent to set a 6 month reminder and a subsequent 9 month reminder from the date of the first examination report, in order to give the applicant adequate time to file at least one response in a timely manner well in advance of the 12 month acceptance deadline.

Some of the countries that utilise acceptance deadlines, and the deadlines they employ, are as follows:

Note:  The United Kingdom also uses an acceptance deadline that is 54 months from the application filing date.

There are a few important points to note with regard to the above acceptance deadlines. Firstly, both Australia and New Zealand have recently instituted legislative changes to their respective Patents Acts, and therefore there are currently different acceptance deadlines that need to be policed for each jurisdiction depending on (i) when examination was requested – for Australia; and (ii) whether the application was filed on or after 13 September 2014 – for PCT national phase applications in New Zealand. In the case of New Zealand, the patent office has proposed to have nested response deadlines sitting within the 12 month acceptance deadline referred to above. It will be important to keep abreast of these changes, and Fisher Adams Kelly will provide further updates as this policy decision develops.

Secondly, South Africa has no substantive examination and the abovementioned deadlines only apply to the ‘formalities examination’ undertaken by the South African Patent Office.

In summary, acceptance deadlines are a concept that can be unfamiliar to patent practitioners in many jurisdictions, and not easy for IP owners to keep track of.  Thus the use of some extra caution and establishing “dummy” deadlines and reminders can ensure that when acceptance deadlines are encountered they can be effectively managed along with typical response deadlines.  Both patent attorneys and applicants can then avoid the unnecessary stress and expense that can be involved in filing unplanned divisional applications at the last minute. A reputable firm of Australian patent and trade mark attorneys will provide a timely system of reminders to ensure that you have plenty of time to meet these deadlines.