In Australia, the time between requesting examination of a patent application and receipt of an Examination Report (ER) can take longer than the 12-month period targeted by IP Australia, particularly in view of the record number of standard patent applications filed in 2021 and 2022.1
While applicants aren't always in a rush to have their patent applications examined and granted, examination delays can be problematic, for example where patent grant is required to assist in securing funding for further development or where potential infringers are on the market or gearing up to enter the market.
IP Australia provides current timeframes for examination for each subject area as follows:2
|Subject area||Examination time|
|CHEM 1 – Biotechnology||19 months|
|CHEM 2 – Chemical compounds||19 months|
|CHEM 3 – Biotherapeutics||26 months|
|CHEM 4 – Polymers and applied chemistry||12 months|
|CHEM 5 – Pharmaceuticals||16 months|
|ELEC 1 – Physics||10 months|
|ELEC 2 – Electronics and communications||8 months|
|ELEC 3 – Computing||9 months|
|ELEC 4 – Data processing and measurements||11 months|
|MECH 1 – Mechanical engineering||14 months|
|MECH 2 – Construction and mining||14 months|
|MECH 3 – Process engineering||11 months|
|MECH 4 – Medical devices||12 months|
|MECH 5 – Packaging and appliances||14 months|
At least once an ER issues, the application must be accepted within 12 months and Australian patent examiners are usually very responsive once submissions in answer to an ER have been filed.
Where early grant is desired, there are options to reduce the wait time for examination, including:
- Request examination early. Examination must be requested by the earlier of 2 months from the date of issuance of a Direction by IP Australia to Request Examination, or 5 years from the filing date of the application. If early examination is desired, an applicant can request examination at any earlier stage, for example, upon entering the Australian national phase or filing an Australian standard patent application.
- Request expedited examination for a reason considered appropriate by IP Australia.3 These reasons include: the invention relates to environmentally beneficial technology, the applicant is a small to medium sized enterprise (SME), and "commercial reasons", which usually do not need to be explained.
- Request expedited examination under a Patent Prosecution Highway (PPH). IP Australia participates in the Global PPH (GPPH)4 and has a bilateral agreement with the European Patent Office.5 In this case, the claims submitted to IP Australia must substantially correspond to claims accepted in a corresponding application in a participating jurisdiction.
An ER can be expected in 4-8 weeks if any type of request for expedited examination is accepted.
Notably, the Intellectual Property Office of Singapore (IPOS) is a participant of the GPPH. IPOS examination wait times are often in the range of 6-12 months, as a result of recent changes to the examination process. If the applicant is interested in filing in Singapore, this may be helpful for jumpstarting examination in Australia.
Between requesting examination early, requesting expedited examination, and prompt response to ERs, applicants have options to expedite examination. Additionally, the accepted Australian claims can be used to expedite examination in other GPPH jurisdictions, such as in Europe under the bilateral PPH agreement between the EPO and IP Australia. Acceptance in Australia may also in effect be used as a basis for streamlined examination in ASEAN countries under the ASEAN Patent Examination Co-operation Program (ASPEC)6.
In some cases, delayed examination is preferable, for example, to conform claims to those allowed in the US, Europe, or China, or to maintain pendency as a competitive tactic. If that is the case, the applicant can fail to place an application in condition for acceptance during the allotted 12-month acceptance period. A divisional application can be filed during the pendency of the application, just before the 12-month deadline for acceptance expires. In theory, this daisy chaining can be carried on for the life span of the patent family.
IP Australia is, however, discouraging this practice and published a revised policy in late 2022.7 A first Examination Report issued for a divisional with a great grandparent or earlier ancestor (so the fourth application in the family) is treated as equivalent to an adverse third Examination Report. That is, a supervising examiner will review the claims to determine whether progress is being made towards acceptance. If not, they can decide whether to set the matter for hearing or case management. An applicant considering daisy chaining divisional applications may want to avoid filing divisional applications with original claims, but instead file with claims that seek to advance at least one prosecution issue.
For the sake of comparison, New Zealand has examination wait times for biotechnology applications that are currently 3 years from the request for examination.8 In addition, New Zealand has a very restrictive divisional practice. The deadline for requesting examination of a New Zealand application is 5 years from the effective filing date (in the case of divisional applications the filing date of the ultimate divisional parent case), which is typically the PCT filing date. This deadline is therefore also the effective deadline for filing any and all divisional applications (and requesting examination). Unless examination is requested very early or divisional applications are filed pre-emptively within the five year period from the original filing date, an applicant can be left without the option to file divisional applications in response to lack of unity objections, if difficult issues are raised during examination or if there are changes to the commercial embodiment.
While New Zealand is hiring and training new examiners to try to reduce the examination backlog, applicants are encouraged to request examination upon entering the national stage or soon after, even if they are not interested in rapid examination. This should leave them with the option of receiving an Examination Report and potentially filing a divisional application before the 5-year deadline. Another option is to file at least one precautionary divisional application, and potentially allow it to lapse if satisfactory claims are granted in the parent case.
And as with IP Australia, New Zealand offers expedited examination via the GPPH. A common strategy is therefore to move an Australian application to acceptance and to submit those claims with a GPPH request in New Zealand.
The take-away is that applicants have options to influence the time to examination and acceptance, but securing good outcomes often requires a proactive approach at an early stage.
At Spruson & Ferguson, we have highly experienced attorneys who can assist in navigating these complexities across the jurisdictions in the Asia Pacific region.
1 See 2023 Australian IP Report Australian IP Report 2023 | IP Australia
3 See Subregulation 3.17(2) and 220.127.116.11 Expedited Examination | IPA Manuals (ipaustralia.gov.au).
6 See What Is ASPEC (aseanip.org).
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.