16 Jul Acceptance Deadline Dilemmas – Don’t get caught out!
Aside from the invention itself, the deadlines for conducting certain acts or paying certain fees are the most important aspect of a patent application as missing one deadline could lead to irreversible catastrophe for the applicant and the attorney handling the matter.
Many countries utilise a “response deadline” when a patent application is undergoing examination. This response deadline is typically a set amount of time after an office action or examination report has issued in which the applicant must respond to any objections raised against their application. The most notable countries and regions which utilise a response deadline are the United States, Canada, China, Japan and the UK. The United States, for example, requires an applicant to respond within three months from the mailing date of an Office Action issued by the United States Patent and Trademark Office. While some extensions are available, if a response is not filed, the application will lapse.
Different countries and regions set different response deadlines, which can make handling multiple matters in multiple jurisdictions complex and confusing. Adding to that complexity is the somewhat anomalous “acceptance deadline” utilised by the patent offices of Australia, New Zealand and India.
The acceptance deadline requires the applicant to achieve acceptance of their application within a set timeframe determined by the date of issuance of the first examination report or office action, irrespective of whether new objections are raised in subsequent reports following a response to the first report.
We have summarised the acceptance deadline rules imposed by various patent offices below to help you make sense of it all, along with some of the quirks of various offices to help you avoid falling into a deadline trap!
The Australian Patent Office requires applicants to achieve acceptance of their application within 12 months of the date of issuance of the first examination report. Extensions to this deadline are incredibly difficult to obtain and are rarely granted.
An Examiner may decline to review a response if it is filed closed to the acceptance deadline because there may be ‘insufficient time’. We recommend responding at least a month before the acceptance deadline to ensure that the Examiner has time to consider the response.
India utilises a similar acceptance deadline practice to Australia, requiring an applicant to achieve acceptance of their application within 12 months from the date of issuance of the first examination report.
The New Zealand Patent Office utilises a somewhat hybrid system which includes response deadlines and an acceptance deadline. The first response deadline requires an applicant to respond within typically 6 months (but may be shorter for divisional applications) of the date of issuance of the first examination report, with the option of a one (1) month extension available upon request when filing the response. Response deadlines for subsequent examination reports may be shorter than the first response deadline. The final acceptance deadline is set 12 months from the date of issuance of the first examination report and cannot be extended.
What if my application isn’t accepted in time?
Thankfully, in each of the above countries, if an application is not accepted within the prescribed time, applicants have the opportunity to file a divisional application (similar to a continuation application in the US) to maintain their pending rights.
However, New Zealand imposes a 5 year time limit on the filing of any divisional applications calculated from the earliest filing date of the application. This filing date will be the filing date of the parent or grandparent if the current application is itself a divisional application from an earlier application.
South Africa also employs an acceptance deadline. However, South Africa does not conduct substantive examination (i.e. no consideration of novelty and/or obviousness) and the acceptance deadline only relates to the formalities examination conducted by the South African Patent Office prior to acceptance of the application.
In addition to a response deadline (set at either two (2) or four (4) months), the United Kingdom also imposes a requirement on applicants to have their application accepted within a “compliance period”. This compliance period requires that applicants have their UK/GB patent applications ready for grant within four (4) years and six (6) months (or 54 months) from the filing date or earliest priority date, whichever is earliest.
Different deadlines and requirements imposed by various patent offices can often cause great distress when dealing with multiple matters across a large number of jurisdictions. This is particularly true for patent applicants who may not be familiar with all the tricks and traps of the laws of overseas countries which may differ to the laws in their home countries.
We believe that best practice is establishing multiple reminders for both ourselves and our clients to assist with managing approaching deadlines to minimise stress and avoid lapsed applications. This can also reduce the need to file divisional applications, which can be costly.
We always ensure our clients are reminded well in advance of approaching deadlines to allow us good time to respond and meet the deadlines.