HIP TIPS - Patent Examination timelines in Australia and New Zealand

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HIP TIPS provides a snapshot into Australian and New Zealand IP practice issues. In this fifth and final edition for 2023, we look at patent Examination timelines in Australia and New Zealand. The full article can be accessed here

HIP TIPS 5 - Patent Examination timelines in Australia and New Zealand

Patent prosecution timelines in Australia and New Zealand are subject to significant variations between lodgement and grant. In some scenarios a faster prosecution cycle may be desirable, such as when an infringing party has been identified. Alternatively, the applicant may wish to delay the prosecution, for example in order to amend the claims based on examination developments in other jurisdictions, such as the United States or Europe.

The following brief summary outlines the tools available to patent applicants wishing to influence their prosecution timelines.

Australia

In Australia, if an application is permitted to run its natural course, the Patent Office will eventually issue a Direction to Request Examination, normally around 2 years from the filing date. Once the Direction issues, the applicant has 2 months to formally request examination and pay the official examination fees.

At present, the delay from requesting examination to receiving a first examination report is outlined in the table below, and dependent on the technology area:

Examination delay after requesting examination:

Noting the delays, particularly in the chemical and biotechnology disciplines, the examination may be advanced by the applicant as follows:

1) Request examination at lodgement 
This does not alter the time periods outlined in the table above, but it does start that window more than 2 years earlier. Requesting examination at lodgement results in a considerable reduction of the prosecution timeline, and there are even cost savings, as there is reduced file handling from our side, as it obviates the need to data enter and report the Direction to Request Examination.

2)  Request expedited examination
This can be done at lodgement or anytime thereafter. Expedited examination differs, in so far as it also causes the application to move up the queue, so the time periods outlined in the table above are significantly shortened, typically to less than 3 months. A request for expedited examination must be accompanied by a reason in support of the request. The permissible reasons are:

•   the invention relates to environmentally beneficial technology;

• the applicant is a small to medium sized enterprise (SME); or

• commercial reasons.
  

  In practice, the Patent Office does not require formal proof to support the reason.

3)  Expedited examination based on the Global Patent Prosecution Highway (GPPH)
The GPPH is available where an application has been examined and allowed in another jurisdiction from one of more than 20 countries, including, Canada, Chile, Israel, Japan, New Zealand, Singapore, South Korea, United Kingdom, United States of America. A similar agreement exists between Australia and Europe.

When the GPPH is invoked, the Australian claims must be substantially aligned with the allowed foreign claims. We typically receive the first examination report within 3 months of initiating the GPPH.

New Zealand

By comparison, the time period between requesting examination and receiving an examination report in New Zealand is more significant, as outlined below. In particular, the delays for biotechnology and chemistry related applications are considerable, with delays for biotechnology cases presently standing at over 3 years.

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Reach out for more information

If you would like any further information on this topic, please reach out to one of our Patent attorneys. We would be happy to schedule a Teams meeting to discuss.

Chris Atichian is a partner in our mechanical team, having practised for over 22 years with respect to mechanical patents and design registrations. Chris specialises in the protection and enforcement of inventions in fields including drilling, medical devices, aircraft and sporting goods. Recommended by IAM patent 1000 in 2022, Chris is the current treasurer of FICPI Australia. Read more...

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