The legislative timeframe to achieve acceptance of an Australian patent application is twelve (12) months from date of issuance of the First Examination Report. This acceptance deadline is not to be confused with a response deadline. All objections raised during examination must be overcome and the patent application must be in order before expiry of the 12-month period, or the application will lapse. Extensions of time as of right are not available in respect of the acceptance deadline. A divisional application must be filed on or before the acceptance deadline if it seems that the application will not proceed to acceptance and the applicant wishes to continue prosecution.
A situation may arise as to what options are available within the 12-month acceptance period when an applicant encounters a recalcitrant examiner that will simply not move from an original opinion in face of an argument that objectively satisfies the balance of probabilities standard.
During examination and no later than the acceptance deadline, it is possible to file a formal request to be heard by a Hearings Officer, with payment of an official fee of $600. At the applicant’s choice, the Hearing may be conducted by written submissions or in person, and the applicant is provided an opportunity to file written submissions in advance of the Hearing date. Amendments may also be filed with the written submissions. The examiner is not a party as of right to the Hearing. The Hearings Officer considers de novo the prosecution history including the examiner’s objections in light of the applicant’s submissions. Some applicants elect to have barrister (counsel) representation at a Hearing in addition to a patent attorney. The Hearing and issuance of the decision will likely take place after the acceptance deadline. The Commissioner has discretionary powers to provide an applicant with a time period to obtain acceptance of the application after expiry of the acceptance deadline, should the applicant be given an opportunity to amend the claims to overcome the objections.
As shown in Table 1, it seems that some high-profile applicants are increasingly taking advantage of this avenue and, for the most part, the results are favourable for applicants. Furthermore, it appears that this “request to be heard” route is gaining popularity to address an impasse during examination. From the writer’s anecdotal observation, this route was used infrequently up until about 2-3 years ago. There are potentially a few reasons for this upward trend. New examination grounds established under The Raising the Bar Act 2013, particularly support and sufficiency, are being regularly raised by examiners. However, the law with regard to support and sufficiency has yet to be well defined by the courts. There are many patent office decisions which set out the approach to be taken but this may not be applied consistently at the Examiner level.
Patentable subject matter (termed “manner of manufacture” in Australia) of computer implemented inventions remains an uncertain area of the law despite court decisions on this topic. The uncertainty has the potential to provide an examiner with fertile ground for which to raise an objection. When coupled with perhaps a hint of confirmation bias, it can be very difficult to convince an examiner that a computer implemented invention is technical in nature, and is thus patentable subject matter. An intransigent stance from an examiner may also be encountered with inventive step, support, and sufficiency objections.
The cases summarised below shows that challenging a primary examiner’s objection with regard to patentable subject matter, inventive step, support, and sufficiency by changing the decision maker can yield fruitful results. The positive decisions are set out in blue, the negative decisions in red and the neutral in the original text colour. In many cases, the Hearings Officer decided in favour of the applicant with either a direction that the application proceed to acceptance or the Hearings Officer decision that the examiner’s objections cannot be maintained and the applicant should be given an opportunity to remedy. This avenue may be particularly useful when faced with protracted examination (i.e. ≥ three examination reports). Under such circumstances, it is easy to imagine that an examiner will become entrenched in a particular stance and may not be moved from that stance despite reasonable argumentation by an applicant. Having a fresh set of eyes examine the case may act as a circuit breaker that will lead to acceptance of the application, or at least a path towards acceptance of the application.
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- eBay Inc. [2019] APO 10
- Four examination reports.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds that invention not directed to patentable subject matter, but possibly patentable subject matter in body of specification.
- Applicant given opportunity to amend.
- Safran Electronics & Defence [2019] APO 17
- Four examination reports.
- Novelty and inventive step issues outstanding from examination.
- Hearing officer finds that claims novel and inventive.
- Application directed to proceed to acceptance.
- Bio-Rad Laboratories, Inc. [2019] APO 26
- One examination report.
- Patentable subject matter and support issues outstanding from examination.
- Hearing officer finds that invention directed to patentable subject matter and that claims are supported by matter disclosed is the specification as filed.
- Application directed to proceed to acceptance.
- ABB Schweiz AG [2019] APO 27
- Three examination reports.
- Inventive step issues outstanding from examination.
- Hearing officer finds that claims are inventive.
- Application directed to proceed to acceptance.
- HRB Innovations, Inc. [2019] APO 30
- One examination report.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds no patentable subject matter.
- Application refused.
- Apple, Inc. [2019] APO 32
- Four examination reports.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds that invention directed to patentable subject matter.
- Application directed to proceed to acceptance.
- BASF Corporation [2019] APO 34 – AU 2017204400
- Three examination reports.
- Support, sufficiency, novelty, inventive step and patentable subject matter (a kit) issues outstanding from examination.
- Hearing officer finds that: claims are novel, inventive and supported; specification is sufficient; a claim to a kit is not patentable subject matter.
- Application is not refused and applicant given opportunity to amend to delete kit claims. Application proceeded to grant of a patent.
- BASF Corporation [2019] APO 34 – AU 2017204506
- Five examination reports.
- Support, sufficiency, novelty, inventive step and patentable subject matter (a kit) issues outstanding from examination.
- Hearing officer finds that: claims are novel, inventive and supported; specification is sufficient; a claim to a kit is not patentable subject matter.
- Application is not refused and applicant given opportunity to amend to delete kit claims. Application proceeded to grant of a patent.
- Apple Inc. [2019] APO 44
- Three examination reports.
- Inventive step issues outstanding from examination.
- Hearing officer finds that claims are inventive.
- Application directed to proceed to acceptance.
- Apple Inc. [2019] APO 45
- Seven examination reports.
- Inventive step issues outstanding from examination.
- Hearing officer finds that claims are inventive.
- Application directed to proceed to acceptance.
- Aqseptence Group Pty Ltd [2019] APO 49
- Four examination reports.
- Novelty and inventive step issues outstanding from examination.
- Hearing officer finds that claims are novel and inventive.
- Application directed to proceed to acceptance.
- [24]/7.ai, Inc. [2019] APO 50
- Five examination reports.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds no patentable subject matter.
- Application refused
- The University of British Columbia [2020] APO 15
- Three examination reports.
- Issues outstanding from examination relate to: clear and complete enough disclosure; support for the claims in the description; and best method of performing the invention described.
- Hearing officer finds that objection cannot be maintained.
- Application returned to examination for consideration of novelty and inventive step.
- Mine RP Holdings (Pty) Limited [2020] APO 17
- Two examination reports.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds that invention not directed to patentable subject matter, but patentable subject matter found in the description.
- Applicant given opportunity to amend.
- Facebook Inc. [2020] APO 19
- Four examination reports.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds that objection not maintainable in light of proposed amendments.
- Returned to examination for consideration of allowability of amendments.
- Apple Inc. [2020] APO 22
- Four examination reports.
- Patentable subject matter issues outstanding from examination.
- Hearing officer finds that invention is directed to patentable subject matter.
- Application to proceed to acceptance.