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 application.
  • 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 patent.
  • 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.