Australian patent examination reports

See also patent protection for Australians

Unlike many other jurisdictions, in Australia:

• patent applications are not examined as a matter of course – rather, examination must be requested (more on requesting examination);
• patent examination reports do not specify response deadlines – rather, each report specifies a deadline by when the Examiner’s objections must be overcome; and
• within this deadline, multiple rounds of examination are permitted without paying additional official fees.

Australia has two types of patents: innovation patents and standard patents. Innovation patents are akin to utility models in other jurisdictions and are granted without examination.

Innovation patents must pass examination and be “certified” within six months of the first report. Standard patent applications must pass examination and be accepted (allowed) within 12 months of the first report. For any application in relation to which examination was requested prior to 15 April 2013, the 12 month period is extendible by up to nine months by paying monthly late fees. The late fees can be paid as a lump sum when responding to the Examiner’s latest report.

The 12 month deadline and, to a limited extent, the six month deadline can in effect be extended by filing a divisional patent application.

During examination, the manner of manufacture (i.e. patentable subject matter), novelty, inventive step, support, sufficiency, clarity and utility requirements (amongst other things) are assessed.

The Australian Patent Office conducts its own searching, and on the international stage its examination reports are well regarded, e.g. are accepted as the basis for expedited examination elsewhere under the Global Patent Prosecution Highway.

Australian Examiners are easily contactable and often receptive of a telephone call. In our experience, when a certification (six month) deadline or acceptance (12 month) deadline is imminent, Australian Examiners are universally helpful and responsive. It is not unusual to successfully prosecute an application in the final days leading up to a deadline, based on late client instructions.

Acceptance of a standard patent application requires an official fee of A$250 plus excess claim fees of A$110 per claim after the 20^th claim. The excess claim fees are calculated based on the number of claims at acceptance and so may be avoided by deleting claims in response to an Examiner’s report (or earlier on, if preferred).

Once an application has been accepted, that fact is typically officially advertised within a few weeks. The official advertisement opens a three month window during which an interested third party may oppose the grant of a patent on the application. Coincidentally, the end of that window is the last opportunity for filing a divisional patent application. In the absence of formal opposition, a patent is typically granted on the application within a few further months.

There are no official fees associated with certification of an innovation patent. Innovation patents are allowed a maximum of five claims.