Strategic implications of changes in Australian Patent Office delays – 17 September 2013
The Australian Patent Office has an extraordinary backlog of patent applications to examine and has recently provided an update of the expected examination timeframes. The update is reproduced below. The backlog arises due to a large number of requests for examination filed in advance of a change in our law earlier this year.
Australian standard patent applications typically remain dormant after filing until the Patent Office issues a direction to request examination. Examination must be requested within two months of the issuance of the direction in order to maintain the application.
Regardless of the issuance of a direction, examination must be requested within five years (60 months) of filing. Previously, directions typically issued about two years after filing, hence the “default” five year deadline was of little practical consequence.
Based on this latest guidance, for an application filed today we would not expect to receive a direction for at least three years. The Patent Office plans to delay directions until 57 months from filing, although presumably the backlog of requests will be processed within the next few years and then this period will be shortened.
This extended period of pendency is of benefit to patentees. It defers the costs of examination, acceptance and grant, and preserves the opportunity to extend the coverage of the patent application. Once an Australian standard patent is granted, its claims cannot be amended to take in subject matter outside of the scope of the granted claims (nor can a divisional patent application be filed to claim that subject matter).
It is not compulsory to wait for the direction. Examination can be requested at any time and can be expedited if there are special circumstances (e.g. there is an infringement in the marketplace).
Moreover, whilst a standard patent application remains pending, a divisional patent application for an innovation patent can typically be filed and made enforceable within weeks. By way of example, the divisional patent application may be filed after, and with claims drafted in view of, a competing product entering the market. This is a popular litigation strategy.
Generally speaking, an innovation patent is more likely to be valid than a standard patent of equivalent scope, yet provides the same rights and remedies. Case law suggests that damages for infringement of such an innovation patent may be payable for infringing acts occurring after the filing date of the standard patent application, including infringing acts occurring before the divisional patent application was filed.
The Australian Patent Office update
“IP Australia [the Australian Patent Office] experienced a surge in voluntary patent examination requests in the 2012/13 financial year. Most were filed in March and April immediately prior to the introduction of the IP Laws Amendment Act 2012. The total number of examination requests in 2012/13 was more than double the previous financial year.
The main impact of this surge will be an increase in the pendency of first reports in coming years. Pendency is expected to increase in the December 2013 quarter, and is likely to exceed the 12 month customer service charter commitment by the end of April 2014. Based on projections, this could average up to 19 months at its peak during 2014, before returning to the 12 month commitment in early 2015.
In response, IP Australia has restricted directions to applications that are 57 months from filing date. This will keep new requests for examination to a minimum, while the enormous volume of pre April 2013 examination requests are processed.
It is likely that IP Australia will have to revise the customer service charter in 2014 due to these exceptional circumstances.
IP Australia will continue to monitor the situation and update customers where appropriate.”
