Australian patent examination directions and requests

See also patent protection for Australians

Australia has two types of patents: innovation patents and standard patents. Innovation patents are akin to utility models in other jurisdictions. In either case, examination is not automatic. Rather, examination must be requested.

Innovation patents are granted without substantive examination, although they must pass examination and be “certified” before enforcement action can be taken or threats of enforcement action can be made. Examination can be requested at any time by the patentee or by an interested third party.

The official fee for a patentee to request examination of their innovation patent is A$500. If a third party requests examination, the third party and the patentee are required to pay an official fee of A$250 each.

Innovation patents are examined expeditiously. Examiner’s reports often issue within a few weeks of requesting examination.

The innovation patent system is being phased out as of 25 August 2021. To use the innovation patent system, an innovation patent application, an Australian standard patent application and/or an international patent application must be filed by then.

Standard patent applications typically remain dormant until about 45 months from their priority date when the Australian Patent Office directs the applicant to request examination. The Patent Office’s direction opens a two month window in which examination must be requested to maintain the application.

Regardless of the issuance of a direction, examination of a standard patent application must be requested within five years of the application’s filing date (e.g. international filing date) to maintain the application. It is not compulsory to wait for the direction. Applicants can request examination at any time. Once the application has been published, interested third parties can ask the Patent Office to direct that the applicant request examination.

The official fee for requesting examination of a standard patent application is A$490. The official fee for asking for a direction is A$100.

When requesting examination of a standard patent application, it is now compulsory to confirm that the applicant has entitlement both to the invention and to benefit from any priority (or divisional parent) applications. In relation to innovation patents, confirmation of entitlement is required earlier on when the application is filed.

So, whilst it has always been good practice to clarify the entitlement details long before examination must be requested, this diligence is now more important. If left until the Patent Offices directs that examination be requested, clarifying this information (and if necessary obtaining inventor signatures, etc) may prove difficult within the two month window.

It is possible to request that acceptance (allowance) of a standard patent application be postponed and it is routine practice to do so when requesting examination. This prolongs the period during which broadening claim amendments can be made, by deferring acceptance if the Examiner has no objections. It is not possible to request that acceptance be postponed for a defined period of time. Rather, acceptance is deferred indefinitely and a positive request for withdrawal is required.

The timing of Examiners’ reports on standard patent applications varies widely. Typically, a report will issue about 12 months or so after examination is requested.