Australian Patent Practice For US Attorneys: 15 Things To Know

Australia is a popular patent-filing destination for US innovators. It has a stable, high-value economy and a patent system that provides a straightforward path to reliably enforceable patents.

Whilst Australian patent prosecution is usually straightforward, here are 15 key points for US practitioners to be aware of.

1. The best embodiment must be disclosed

Australian patent applications (including Australian national phase applications) must ‘disclose the best method … of performing the invention’¹  known to the applicant at the time of filing the patent application.

The requirement also applies to divisional patent applications which might be filed years after the initial priority application. As such, when filing a divisional patent application, it is important to consider whether the applicant has developed a better way of performing the claimed invention since filing the parent application. If so, the divisional specification should normally be amended to disclose that best method.

Case law indicates that the degree of disclosure required depends on the nature of the invention, and speaks of good faith as opposed to holding back information.²

2. EPO-like support and sufficiency requirements

Subsequent to the ‘Raising the bar’ legislative amendments in 2013³, the Australian approach to the written description requirements is similar to the approach taken by the European Patent Office. Broad claims written to take advantage of US law should be supplemented by a strong set of dependent claims. Australian patent attorneys routinely amend the descriptive text of specifications drafted to suit US practice to modify passages that infringers might use in support of an argument that the claim is broader than the inventor’s contribution to the art.

3. The invention must deliver on its promises

An Australian patent can be held invalid if the invention as claimed fails to achieve its stated objectives.⁴  As such, it is good practice to make only modest promises. Specifications drafted to suit US practice are routinely amended to moderate object statements to specify the preferred embodiments of the invention (rather than the invention) achieves certain results.

4. No doctrine of equivalents

Australian patent claims should be be given their plain and ordinary meaning although a purposive construction is preferred to a purely literal one and ‘[i]t is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.’⁵ (Our emphasis)

Purposive construction, generous measures of common sense, reading in context and reading in light of common general knowledge all mitigate the ‘harshness’ of a purely literal construction but do not extend the claims to take in subject matter that is merely equivalent to the claimed subject matter. Generally speaking, an Australian patent claim to a ‘device comprising [certain features] and a screw’ does not cover a ‘device comprising [the certain features] and a rivet [instead of the screw]’, even if the difference between a screw and a rivet is irrelevant to the inventive concept and the working of the device, and was never mentioned in prosecution.

5. No file wrapper estoppel

Australian courts do not ordinarily refer to prosecution history when construing patent claims. Australia has no counterpart to the US doctrines of prosecution history estoppel or prosecution disclaimer.

6. National phase entry is straightforward

Australia applies the 31-month PCT deadline. If the international application has been published and is in English, Australian patent attorneys can enter the national phase in Australia based on your simple instructions. There is no need for powers of attorney, declarations or assignments, etc.

7. Examination must be requested

Australian patent applications are not automatically examined. Rather, examination must be requested and the corresponding official fee must be paid by the earliest of:

(a)           five years from the non-provisional filing date (e.g. international filing date); or

(b)          two months from the Patent Office directing that examination must be requested.

Directions to request examination are typically issued about four years after the filing date, or within a few months of filing in the case of divisional patent applications.

The official examination fee is currently 550 AUD (about 390 USD).

8. Entitlement required to request examination

There is no requirement to file an assignment as in the US. Rather, when requesting examination, the Patent Office must be advised that the applicant derives title to the invention.

9. Acceptance routinely postponed

Acceptance in Australia corresponds to allowance in the US. Usually, no amendments are filed when entering the national phase in Australia. Instead, it is customary to file a ‘request for postponement of acceptance’ alongside the request for examination. The request for postponement ensures that an examination report will issue, even if the examiner has no objections.

This approach preserves the opportunity to file broadening claim amendments, avoids an official fee, and defers costs. The issuance of the examination report presents a convenient opportunity to file routine minor amendments to suit Australian practice.

10. 12 to 18 month examination queues

Typically, the examiner will provide their feedback 12 to 18 months after an ordinary request for examination. The actual timeframe varies based on workloads within the Patent Office’s different technology groups and can be checked here.

11. Excess claim fees based on the number of claims taken up by the examiner

The Australian excess claim fees are 125 AUD (about 85 USD) for each of claims 21 to 30 plus 250 AUD (about 170 USD) for each additional claim.

Independent claims and dependent claims attract the same fees, e.g. a set of claims consisting of 20 independent claims would not attract excess claim fees. Multiple claim dependencies (including multiple-on-multiple) are permitted without additional fees.

The excess claim fees are calculated based on the number of claims when the examiner first takes up the application and, as such, can be avoided by filing a voluntary amendment alongside the request for examination or shortly after requesting examination.

12. Examination can be expedited without charge

Requesting expedited examination should lead to the examiner’s feedback within eight weeks.

There are no additional official fees for requesting expedited examination, although a reason sufficient to satisfy the Patent Office that:

(a)           [expedition] is in the public interest, or

(b)          there are special circumstances that make [expedition] desirable

must be provided.⁶ In practice, this is straightforward. The Patent Office’s electronic portal includes the following selectable options:

•            Green technology (climate ready)

•            Commercialisation or SME fast track

•            Possible infringement

•            Licensing reasons

‘SME’ refers to Small to Medium Enterprise and is not clearly defined.

Expedition can be requested under the Patent Prosecution Highway [PPH], although this will (a) entail administration associated with identifying the foreign Patent Office work product and filing claim concordance tables (etc), and (b) not lead to examination any faster than simply choosing one of the above selectable options.

13. No response deadlines, RCE fees or final Office Actions

The issuance of the first examination report opens a 12-month window to persuade the examiner that the application is in order for acceptance (allowance).

During the 12-month window, multiple report-response iterations are allowed without any additional fees or any new restrictions on the amendment options available. Australian patent examiners typically process responses within 20 working days and often move more swiftly if the 12-month date is drawing near.

In most cases, the 12-month deadline is not extendible, although it is commonplace to file a divisional patent application shortly before the deadline, and then allow the application under examination to lapse and continue prosecution of the same (or similar) claims in the divisional patent application.

14. Informal examiner interviews

Australian patent examiners are usually happy to take simple telephone calls and engage in constructive discussion. This is often a good option if there appears to be misunderstanding and/or the 12-month acceptance deadline is imminent.

15. No information disclosure statements

An Australian patent can be revoked if it was procured by fraud or false suggestion. On the other hand, there is no Australian counterpart to the duty of candor to the US Patent Office. As such, there is no requirement to direct an Australian examiner’s attention to the pertinent prior art, although of course Australian examiners routinely refer to the USPTO and EPO examination histories where available.

Conclusion

Australian patent prosecution is more flexible and applicant-friendly than US patent prosecution. We are experienced Australian patent attorneys expert in assisting US patent attorneys. We offer the very best attorneys and paralegals backed by robust business systems and a quality-focused culture to further streamline the process. Learn more about our Australian patent attorney services for US attorneys or contact us for a comprehensive quote and costed procedural outline.

1. Patents Act 1990 (Cth), s 40(2)(aa). ↩︎
2. E.g. Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689 and Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 ↩︎
3. Intellectual Property Laws Amendment (Raising the Bar) Act 2012 ↩︎
4. See e.g. ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 ↩︎
5. Eli Lilly and Company Limited v Apotex Pty Ltd (2013) FCA 214 at paragraph 139 ↩︎
6. Patent Regulations 1991, Reg 3.17 ↩︎