Authors: Shelley Rowland and Tomas Ribeiro
IP Australia recently announced that there are likely to be delays in issuing first examination reports for patent applications over the next few years.
In Australia a patent is not examined until a Request for Examination is filed. The Request for Examination must be filed within 5 years from the date of filing the patent application or within two months of IP Australia issuing a Direction to Request Examination.
Typically, on average, IP Australia would issue a first examination report within 12 months of a Request for Examination being filed.
However, there was a huge surge in Requests for Examination filed before the new Patents Act came into force on 15 April 2013. The number of Requests for Examination in 2012-2013 was more than double the amount received during the previous financial year.
Due to this surge, IP Australia predicts that there will be a delay in the issuing of first examination reports. First examination reports that issue in 2014 will issue on average 19 months from requesting examination. IP Australia anticipates that in 2015 the delay in receiving a first examination report will return to 12 months from requesting examination.
In addition, and to ease pressure, IP Australia will only issue directions to request examination on applications that are 57 months from their filing date.
Given the expected delay in first examination reports issuing, it is worth noting that there are a number of ways to expedite examination in Australia.
General Expedited Examination
Examination can be expedited if the Commissioner of Patents is reasonably satisfied that "it is in the public interest, or there are special circumstances that make it desirable."
Sufficient reasons for requesting expedited examination under this provision may include suspected or anticipated infringement, an impending product launch or a possible investment opportunity, for example.
We have found that this is a very good way of expediting examination, and that IP Australia readily accepts requests made under this provision.
Green Technology Fast Track programme
The Green Tech Fast Track programme has been provided to ensure that green technology can get to the marketplace quickly. Applicants with inventions relating to environmentally-beneficial inventions are able to request expedited examination under this programme.
Sufficient reasons for requesting expedited examination under this scheme may include that the invention relates to technology that decreases carbon emissions into the atmosphere, for example.
Patent Prosecution Highway (PPH)
Examination can be expedited under the bilateral PPH agreement between the United States Patent and Trademark Office and IP Australia. The Australian application must be for the same invention as the corresponding US application and the claims pursued in Australia must have been allowed by the USPTO.
Patent Cooperation Treaty (PCT) Patent Prosecution Highway (PCT-PPH)
If the Australian application is a national phase application stemming from a PCT application, the PCT-PPH programme can be used to expedite examination. The International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) must be either IP Australia or the USPTO. The main requirement is that the Australian application must contain claims found to be allowable during examination of the PCT application by the ISA/IPEA.
Given that there are no additional official fees associated with requesting accelerated examination in Australia, any one of the options discussed may be used as a relatively quick and cost effective way to expedite examination.
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.