Part 1- Reducing examination wait times in Australia
In our first article of a four part series, Practice Group Leader – ChemLife, Amanda Stark and Patent Attorney, Dr Megan Cole, provide some tips and tricks for bypassing examination wait times in Australia so the end goal – a granted patent – is reached expediently.
The time between lodging a patent application and receiving a certificate of grant can vary significantly depending on the nature of the technology, the countries/regions where the application is filed and the time spent in active prosecution. Much of the time, however, is spent waiting – waiting for publication of the PCT pamphlet, waiting for entry into national phase, waiting for an application to be examined.
While the wait times may be welcomed in some situations, in others, such as where a licensing agreement hangs in the balance or where an alleged infringement has occurred, these wait times are perceived as an obstacle to overcome.
Furthermore, in jurisdictions such as Australia and New Zealand where the applicant is required to actively initiate the examination process[1] and where the wait times for a first examination report can range anywhere from nine months to over two years even after making the request,[2] a means to expedite prosecution may be desirable – or even imperative – to many applicants.
Average wait times for a first examination report in Australia
| Technology class | Duration |
| Biotechnology | 20 months |
| Chemical compounds | 12 months |
| Bio-therapeutics | 25 months |
| Polymers and applied chemistry | 10 months |
| Pharmaceuticals | 16 months |
| Physics | 10 months |
| Electronics and communications | 9 months |
| Computing | 10 months |
| Data Processing and measurements | 10 months |
| Mechanical engineering | 13 months |
| Construction and mining | 14 months |
| Process engineering | 11 months |
| Medical devices | 11 months |
| Packaging and appliances | 12 months |
Tips and tricks for reducing examination wait times in Australia
Tip 1: Enter national phase early
It is possible to enter national phase in Australia prior to the 31-month deadline and to file a request for examination at that time. It is even possible to enter national phase in Australia before publication of the PCT pamphlet. Early entry into national phase in Australia simply requires providing a copy of the application, translated into English if necessary, and payment of the prescribed fees.[3]
Trick: Making a request for early entry into national phase can move up the timeline for receiving a first examination report.
Tip 2: Request examination upon filing
It is necessary to file a request for examination within five years of the effective filing date of an application. While a Direction to Request Examination may issue as soon as 12–18 months post-filing and setting a two month deadline to make the request,[4] a Direction typically will not issue until the five year deadline is nearing.[5] Hence, an applicant’s inactivity could cost them years.
Furthermore, while IP Australia aims to provide a first examination report within 12 months of receiving a request,[6] current wait times in some fields can exceed two years.[7]
Trick: The sooner a request for examination is made, the shorter the wait time will be. Requesting examination at filing can reduce wait times by as long as five years.
Tip 3: Request expedited examination
Expedited examination may be requested together with the request for examination.[8] Grounds for requesting expedited examination include “pressing commercial reasons” or eligibility under one of the three fast track options:
- Green technology
- Small to medium enterprise, or
- Patent Prosecution Highway (PPH).[9]
Should the request for expedited examination be accepted, IP Australia aims to provide a first examination report within eight weeks.[10]
Trick: Requesting expedited examination can reduce the wait time for a first examination report from nine plus months to about eight weeks.
Tip 4: Utilise a Patent Prosecution Highway (PPH)
Examination under a PPH is available if:
- an associated foreign application has been examined by an ‘Office of Earlier Examination’[11] and found to have at least one allowable claim
- the scope of the AU claims is the same or narrower than the associated application, and
- no examination report has issued on the AU application.
As with other expedited examination requests, IP Australia aims to provide a first examination report within eight weeks.[12]
Trick: Requesting examination under the PPH can reduce wait time for a first examination report from nine plus months to about eight weeks.
Key takeaways
Although the Patent Office in Australia is experiencing backlogs in examining applications, particularly in the biotechnology space, these delays need not prolong the pathway to acceptance. Examination wait times can be reduced by lodging a request for examination early or seeking an expedited examination for allowable reasons.
If you are interested in learning more about fast tracking a patent application in Australia, get in contact with one of our knowledgeable attorneys at Griffith Hack today.
Also, look out for our next article where we will present tips and tricks for reducing examination wait times in New Zealand.
[1] Patents Act 1990 (Cth) s 142(2)(a); Patents Regulations 1991 (Cth) reg 3.15(1); Patents Act 2013 (NZ) s 64(1); Patents Regulations 2014 (NZ) reg 71(b).
[2] IP Australia, ‘Timelines’, About Us – Our Customer Promise ‘Patent Response Times’.
[3] Patents Act 1990 (n 1) s 29A; Patents Regulations 1991 (n 1) reg 3.5AB.
[4] Patents Act 1990 (n 1) s 44(2); Patents Regulations 1991 (n 1) reg 3.16(2).
[5] IP Australia, ‘How to Request an Examination’, Patents – How to Apply. ‘When Should I Request Examination’.
[6] Ibid ‘When should I request examination’.
[7] IP Australia (n 2).
[8] Patents Regulations 1991 (n 1) reg 3.17(2).
[9] IP Australia (n 5) ‘Expedited Examination’.
[10] IP Australia (n 2) ‘Patent Response Times.
[11] IP Australia, ‘Examination under a patent prosecution highway’, International Cooperation 1. Examination under the Global Patent Prosecution Highway
[12] Ibid.
