The Australian Patent Office has advised that the time between requesting examination and receiving a first examination report is likely to increase to around 19 months during 2014, exceeding their 12-month customer service charter. In addition, the Patent Office will not issue Directions to applicants to request examination until 4 years and 9 months after their application is filed, thereby keeping new requests for examination to a minimum. As the Direction gives the applicant 2 months in which to request examination, this is getting very close to the statutory limit of 5 years from the filing date, within which a request for examination must be made in Australia.
These time blow-outs are due to a surge in patent examination requests in the lead up to the introduction of the IP Laws Amendment Act 2012 in April this year. The number of examination requests in the twelve months to 30 June 2013 was more than double that of the previous financial year.
In these circumstances, applicants should bear in mind that examination may be requested voluntarily, rather than waiting for a Direction to request examination and requesting examination in response to that Direction. It is also possible to request that examination of an application be expedited, although the Patent Office requires reasons to be provided with the request for expedited examination, for example that there are pressing commercial reasons. In the past, these requests were usually quite readily granted, a satisfactory reason being all that was required. The Patent Office has not indicated whether their practice in considering requests for expedited examination will change, but it would be reasonable to expect that it might tighten up in the current climate. For example, it is possible that the Patent Office could require the submission of evidence supporting the reasons given for a request.
The patent office has said that it expects the pendency of first reports to return to the 12 month commitment in early 2015, but has advised that it will probably revise its customer service charter for 2014.
If you have any specific enquiries about requesting examination of Australian patent applications please contact Debra Tulloch.