Australian patent examination reports

See also patent fundamentals

Unlike many other jurisdictions, in Australia:

• patent applications are not examined as a matter of course – rather, examination must be requested (more on requesting examination);
• patent examination reports do not specify response deadlines – rather the examiner must be persuaded that the application is in order for ‘acceptance’ (allowance) within 12 months of the first examination report; and
• within this deadline, multiple rounds of examination are permitted without paying additional official fees.

In effect, the 12-month acceptance deadline can be extended by proactively filing a divisional patent application.

During examination, the manner of manufacture (i.e. patentable subject matter), novelty, inventive step, support, sufficiency, clarity and utility requirements (amongst other things) are assessed.

The Australian Patent Office conducts its own searching, and on the international stage its examination reports are well regarded, e.g. are accepted as the basis for expedited examination elsewhere under the Global Patent Prosecution Highway.

Australian examiners are easily contactable and often receptive of a telephone call. In our experience, when a certification (six-month) deadline or 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, that fact is typically 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 convention applications.