The Australian government agency responsible for administering IP rights in Australia has recently announced that from May 2021 to June 2022, it will be conducting a trial of an innovative machine learning model to improve the process where patent applicants are directed to request examination.
While patent examination can be requested at any time, examination must be requested within two months of receiving a direction from IP Australia to do so, or within five years of filing (whichever is sooner). Failure to request examination in time will result in lapsing of the application.
IP Australia will typically direct an applicant to request examination around 4 years after filing. Once Examination has been requested, it joins a queue, where it waits to examined, with IP Australia aiming to issue a first report within 12 months.
For applicants looking to accelerate the process, there is the existing option of requesting expedited examination, where IP Australia will aim to issue the first report within 8 weeks of the request.
S44(2) of the Patents Act 1990 stipulates that the Commissioner may, on one or more prescribed grounds, direct the applicant to request examination. The prescribed grounds are found in Reg 3.16 of the Patents Regulations 1991:
- That the Commissioner reasonably considers it expedient to give the direction having regard to the progress made in the examination of applications filed before the filing date of the application concerned;
- That the Commissioner reasonably considers it to be in the public interest to give the direction;
- That the Commissioner reasonably considers it expedient to give the direction, having regard to the examination of another application for a standard patent or the examination of an innovation patent.
The Regulations also require that the direction must be given in writing and state the grounds on which it is given.
The intent of the new model is to issue a direction to applicants when an applicant's IP strategy is more developed, with the aim of helping applicants navigate the patent examination process more efficiently. This will apply to applications made using patent attorney firms and self-filers. The model may change the previous first come, first served order of directions by focusing on applications that are considered more likely to be ready for examination, but the model will not change the directions process as mandated by the Patents Act.
However, it will be interesting to see whether the reason provided is updated to indicate that the decision has been made because of this new process, or whether it will remain the current default reason:
“You have received this direction because either progress has been made in the examination of applications filed before the filing date of your application or I consider it to be in the public interest”
The announcement of this trial comes around the same time that the Australian Government's commissioned review in to the accessibility of the Australian patent system to small and medium enterprises (SMEs) was tabled in parliament. Provide a link.
The final report of the Patents Accessibility Review made 16 recommendations intended to improve both the accessibility of the patent system and the support provided to Australian SMEs applying for protection in Australia and overseas.
The report was based on findings from oral consultations with SME representatives and other specialists, including commercialisation advisors, organisations representing patent attorneys such as IPTA and FICPI and patent attorneys. The research team also considered submissions and undertook their own research.
While the complete report makes interesting reading for all stakeholders, it does provide commentary on processing times for patent applications, with the executive summary stating:
“On processing times there is no significant issue, given that IP Australia can arrange for expedited review of a patent application at no extra cost, this taking three months. Some participants were quite happy for the delay of a year or so (this being the standard patent examination time under normal circumstances) – but there is no doubt that the availability of an expedited review service will deal with any problem here.”
The Report identified that for many, the delay in examination of a patent application was useful, as costs were postponed, including the following, non-attributed quote:
“Australia is amongst the fastest jurisdictions in the world.
This is a red herring. SMEs applications shouldn't be dealt with quickly. …It's important to defer prosecution costs.”
The decision to move to this new process raises many questions:
- What metrics does IP Australia intend using to determine how developed an applicant's IP strategy is?
- What does IP Australia consider to be efficient navigation of the patent examination process?
- Will this model be influenced by the progress of corresponding overseas patent applications?
- What does it mean to be more likely to be ready for examination?
- What can an applicant do to prevent early directions issuing?
While the findings of the accessibility report are not contradictory to IP Australia's efforts to improve the customer experience, it is hoped that the agency is careful when it comes to anticipating the diverse needs of its customer base.
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