If an Australian patent applicant wishes to accelerate the
progress of their Australian patent application, it is common
practice to request examination of the application at filing or
very shortly thereafter. However, there are other benefits to
requesting examination early that may not be immediately apparent
to applicants. Some of these benefits are mentioned below:
An early patent search is performed by the Australian Patent
Office. This will provide the applicant with a prior art search,
the results of which can be taken into account, for example, when
prosecuting overseas applications. The prior art results can be
used as a basis for pre-emptive claim amendments to be made for
overseas applications. For US applications this may allow the
claims to enjoy a broader interpretation.
The early search and potentially early acceptance of the
application can be used, in certain circumstances, to accelerate
the prosecution of a corresponding US application by way of the
Patent Prosecution Highway (PPH). The PPH allows a
US application that is awaiting examination to be given priority
over other pending applications so that it is examined earlier, as
long as the Australian application has been accepted by the
Australian Patent Office (for more information on PPH see http://www.shelstonip.com/news_story.asp?m=6&y=2008&nsid=5).
There is a potential for lower cost from an administrative
perspective, as a number of actions can be completed at once rather
than being spread over the life of the application.
Enforceable protection is gained earlier, without excluding the
ability to seek further protection based upon the disclosed subject
matter. For example, after a patent application is accepted, one or
more divisional applications can be filed to maintain the option to
seek additional protection for subject matter disclosed but not
claimed in the accepted application. Accordingly, a patent is able
to grant while additional claims are pursued in the divisional
Enforceable protection can be helpful for international
prosecution. For example, in Singapore, the examination process can
be streamlined if there is a corresponding granted Australian
By bringing forward the opposition period relevant to an
application the applicant will, if the patent application is
opposed, find out earlier not only who the opponent is, but also
what prior art is relied upon. This market intelligence can be used
to refine the strategy for both prosecuting patent applications in
other jurisdictions and protecting additional developments in the
field of the invention.
There is also a chance that, by accelerating the application
process, a patent would be granted before a competitor is aware.
This is particularly advantageous if the grant of the patent would
have otherwise been delayed due to opposition proceedings.
If you wish to explore any of the above issues, please do not
hesitate to contact any of our attorneys. Importantly, any IP
strategy should be tailored to your specific circumstances and the
relevance of the above advantages to your applications should be
viewed in the context of your portfolio as a whole and the
surrounding commercial objectives.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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