Australian patent examination reports for US attorneys

An outline noting differences to US practice

Unlike US Office Actions, Australian examination reports do not have response deadlines as such. Rather, the examiner must be persuaded that the application is in order for ‘acceptance’ within 12 months of the first examination report. Acceptance in Australia corresponds to allowance in the US. In effect, the 12-month acceptance deadline can be extended by proactively filing a divisional patent application.

During the 12-month period, multiple rounds of written responses and further examination reports are possible without paying additional official fees. Further examination reports are usually issued within 20 working days.

Australian examiners are easily contactable and often receptive of a telephone call. In our experience, when an 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.

Once an application has been accepted, the acceptance is 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.

See also:

• Australian patent examination requests
• Australian patent applications – from national phase entry or Convention filing to grant and beyond
• Australian national phase entry deadline and filing requirements

Experienced Australian patent attorneys to care for your clients’ Australian patent applications.