Australian Patent Examination
Examination of an Australian standard patent application must be requested in Australia within the earliest of five years of the filing date of the complete patent application, i.e. for national phase entries within five years of the international filing date, and within six months of the Australian Patents Office issuing a Direction to Request Examination.
It is IP Australia (i.e. the Australian Patent Office's) policy to issue a Direction to Request Examination on all standard Australian patent applications, including national phase entry applications, before the five year deadline.
Depending on the workload in the particular examining division, a Direction to Request examination usually issues within about eighteen months of national phase entry.
Once the Direction to Request Examination has issued the patent applicant has six months within which to lodge a Request for Examination.
After lodging the request for examination, which may be a request for expedited examination, the Examiner will perform an examination and either accept the application or issue an examination report.
If an examination report issues then the applicant will have twenty one months from the date of the first report to reply and overcome the grounds for objection. For example, a response may include a request to amend the claims and/or arguments in support of the application.
If a second, or subsequent, examination report issues then the deadline for placing the application in a state for acceptance remains twenty one months from the date of issuance of the first examination report.
Any responses filed in the nine month period between twelve months after the issuance of the first examination report and the 21 month acceptance deadline, must be accompanied by payment of a late response fee.
Modified and Normal Patent Examination
There are two types of patent examination in Australia. The first type of examination is Normal Examination and the second type is Modified Examination.
Normal Examination entails the Examiner making a prior art search and issuing a report taking into account the novelty and inventive step of the claims, the nature of the subject matter that is claimed and the so called 'internal requirements' for a patent specification.
The primary internal requirement at examination stage is whether or not the claims are fairly based upon the disclosure of the invention that has been provided.
MODIFIED EXAMINATION - OVERVIEW
If you have had a patent for the same invention granted in one of a number of overseas countries, then modified examination can be requested on the basis of the overseas granted patent.
Under modified examination the Examiner's primary concern is to check that
- The Australian patent specification is in the same form as the overseas granted patent; and that
- The overseas examiner performed an appropriate prior art search.
If the above two requirements are met then in our experience the Examiner won't investigate whether or not the claims comply with the novelty and inventive step requirements of the Australian Patents Act.
Also, the Examiner won't check that the patent specification meets the internal requirements set out under Section 40 of the Australian Patents Act, i.e. that the claims are fairly based and clear and are for only one invention.
So, you will appreciate that modified examination may be an attractive option if the applicant is prepared to accept a less thorough examination.
It is important though to recognize that the modified examination option involves some important limitations:
- Australian patents that are granted under the modified examination
procedure will, just like all Australian patents, be open to
re-examination, opposition, and revocation actions. If any of those
procedures are taken by third parties then the patent will be
vulnerable to invalidation or limitation in accordance with the full
range of requirements set out in the Australian Patents Act, not simply
on the grounds that the modified examination was not carried out
Some of the requirements for a patent in Australia are actually easier to meet than in a number of overseas jurisdictions. In particular, the obviousness, i.e. inventive step, threshold in Australia is lower than in some overseas jurisdictions, particularly the USA. This means that were normal examination requested in Australia, it may be possible to secure grant of claims that are broader than would be available under the modified examination route.
Voluntary amendments to conform the patent specification to Australian practice will usually not be possible. For example, in Australia multiple claim dependencies and omnibus claims are both acceptable. If the overseas granted patent doesn't include these then they can't be introduced into the Australian patent application if the modified examination route is selected.
MODIFIED EXAMINATION - PREREQUISITE CONDITIONS
Modified examination can only be requested if the applicant has had a corresponding patent application, for the same invention, granted in English, in a prescribed overseas country. At present the prescribed overseas countries for modified examination in Australia are Canada, New Zealand, the United States of America (USA),and any country that is a signatory to the Convention on the Grant of European Patents. (EPC)
At the time of writing, the relevant EPC countries are Austria, Belgium, Cyprus, Denmark, Finland, France, Germany, Hellenic Republic, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, Spain, Sweden, Switzerland, and United Kingdom.
When modified examination is requested the Australian patent specification must be amended so that it is in the same form as the granted foreign patent on which the modified examination is based.
Usually, this means that the Australian patent specification must be made identical to the granted foreign patent.
A certified copy of the granted foreign patent must also be lodged. Interestingly, IP Australia will accept a copy of the granted foreign patent that is certified by the applicant's Australian patent attorney.