9 Things US Patent Attorneys Should Know About AU Patent Examination

We are Australian patent attorneys expert in assisting US patent attorneys. This page outlines key differences between Australian and US patent examination practices.

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) 5 years from the non-provisional filing date (e.g. international filing date); and
b) within 2 months of the Patent Office directing that examination must be requested.

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

The official fee is currently 550 AUD (about 390 USD). Our service fee is currently 975 AUD (about 690 USD). Examination can be requested at any time and there are administrative efficiencies associated with requesting examination when filing a convention application or when entering the national phase. We currently apply a 300 AUD (about 215 USD) discount when requesting examination alongside one of these actions.

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.

Acceptance routinely postponed

Acceptance in Australia corresponds to allowance in the US. Usually no amendments are filed when 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 than an examination report will issue even if the examiner has no objections.

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

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 actual workloads within the Patent Office’s different technology groups and can be checked here.

Excess claims 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. We currently apply 20 AUD (about 14 USD) service fee for each excess 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 (inlcuding 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.

Simply filing such a voluntary amendment to present claims provided to us currently costs 300 AUD (about 215 USD). If the new claims are unlikely to draw objection (e.g. because they are closely based on allowed US claims), e.g. we suggest instructing us to briefly review the specification and make minor amenmdents to suit Australian practice (at an additional cost of about 500 AUD, about 355 USD) and proceed without customary request for postponement of acceptance to avoid the cost associated with the examination report.

The Patent Office warns that examination is approaching

At the time of writing, the Patent Office issues a warning six months in advance of the anticipated examination date although the practice is under review. The warning is a convenient prompt for filing voluntary amendments.

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

‘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.

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.

Generally speaking, the 12-month deadline is not extendible although it is a common place to file a divisional patent application shortly before the deadline, then allow the application under examination to lapse, to secure a de facto extension.

Informal examiner interviews

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

No duty of candor

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 US file wrapper.

Conclusion

Australian patent examination is more flexible and applicant-friendly than US patent examination. 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-focussed 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.