A Request for Examination must be filed within five years of the filing date of the application. Failure to request examination will result in abandonment of the application. However, the Commissioner will usually direct the Applicant to request examination prior to the 5-year anniversary of the filing date. The Direction to Request Examination sets a non-extendable, two-month deadline to request examination.
Under Australian practice, it is necessary to make a Statement of Entitlement to the grant of a patent. In order to substantiate the Statement of Entitlement at the time of examination response to the following questions is required:
- Do(es) the Applicant(s) has/have entitlement from the actual inventor(s) (e.g. by way of employment, agreement, assignment or contract)?
- Is/Are the Applicant(s) the applicant(s) on the Basic application(s)? If not, do(es) the Applicant(s) have entitlement from the Applicant(s) of the Basic application(s)?
- Is/Are the Basic application(s) the first application(s) made in a Convention country in respect of the invention? If not, we need the application number(s) of the first filed Basic application(s), which will need to be formally disregarded.
Expedited examination may be requested, which will typically result in issuance of an examination report within four to seven weeks depending on the workload at IP Australia. However, cogent reasons for requesting that examination be expedited must be provided. These can include such reasons as commercialisation demands, pending or existing license agreements and potential or existing infringement.
A request made under a Patent Prosecution Highway program is another avenue to expedite examination should claims have been granted in a corresponding partner patent office. Here is more information regarding Australia’s involvement in Patent Prosecution Highway programs.
Issuance of a first examination report sets a 12-month period for overcoming the issues raised during examination. This is not a response deadline. The application must be accepted by the 12-month acceptance deadline. The deadline is not extendable and failure to gain acceptance by this deadline will result in lapsing of the application. It is recommended that a response to the first examination report is filed as soon as possible in case further examination reports issue. If acceptance has not been achieved by the acceptance deadline, a divisional application can be filed prior to the acceptance deadline to continue prosecution.
The application will be accepted once all the issues are resolved. Acceptance of the application will be advertised in the Journal of IP Australia for a period of 3 months. During this time, any third party can file a Notice of Opposition. Divisional applications must be filed within 3 months of the publication of acceptance. A penalty fee of $110 per claim over 20 at acceptance is payable.
It is possible to request postponement of acceptance to a date no later than the acceptance date. A request to postpone acceptance is typically made at the time of requesting examination. A key advantage of having a postponement of acceptance in place is that it provides more time to consider divisional applications and to reduce claim numbers.