Rules and requirements for early national phase entry and expedited examination requests differ from country to country, so what are the options available for patent applicants in Australia?
In this in-depth Q&A, Robyn Heard and Dr Sophie Rankenburg from Griffith Hack’s Perth office provide answers to some of the commonly asked questions about early national phase entry in Australia, and the options available for expedited examination requests.
Early national phase entry
What is the deadline for entering national phase in Australia?
The deadline for entering national phase in Australia is 31 months from the priority date of the application.
Is it possible to enter the national phase early in Australia?
Yes, as early as desired. However, it is worth noting that if national phase is entered before publication of the corresponding international PCT application (i.e. less than 18 months from the priority date), then a copy of the international application and any article 19 amendments must be provided. If the application is not in English, a verified translation must also be provided.
If entering the national phase early in Australia, will the application be processed early or will it sit in queue and be processed at the 31-month deadline?
Once the national phase is entered (even if early) the 31-month deadline ceases to be relevant and the application will be processed along standard timelines – unless early processing of the application is specifically requested. Examination may be requested on national phase entry.
Is there any additional cost for entering the national phase early?
No, there are no additional official fees. However, there may be additional attorney fees associated with this service – for example, to file additional documents if the PCT is pre-publication.
What is the earliest date the examination request can be filed?
Examination can be requested as early as at the time of filing the application. The final deadline to request examination is the earlier of 5 years from the effective filing date of the application or 2 months from the date the patent office issued a direction to request examination.
If early examination is requested, will the application to be examined early or will it sit in queue and be processed after the examination deadline?
If examination is requested early, it is expected that it will be processed early. However, if the ISR and ISO are not available at the time of examination, some delay may be expected at least until the ISR and ISO issue. Based on our recent experience, Australian applications are typically examined (unless we request expedited examination) around 6-12 months from the date examination is requested.
Is there any additional cost in requesting examination early?
No, it is the same cost as that which would be payable if examination was requested normally within the prescribed time.
Can an accelerated processing/examination of a case be requested?
Yes, expedited examination can be requested either as a direct request to the Australian patent office, or via the Global Patent Prosecution Highway (GPPH).
Australia is on the Global Patent Prosecution Highway
IP Australia is one of 25 patent offices around that world that is a member of the Global Patent Prosecution Highway. In broad terms, if you receive a ruling from one of the member offices that at least one claim in your application is allowable, you can ask another member office to fast track the examination of your corresponding application. Conversely, an early acceptance in Australia might be used to speed up examination in other countries.
If accelerated processing can be requested, what are the requirements for doing so and costs?
No extra cost for requesting expedited examination is payable, however there may be additional attorney service charges.
There are two options in Australia to expedite examination.
Option 1: GPPH
A request for expedited examination under the GPPH program is filed relying on the prosecution of a corresponding application (claiming the same priority date and document as claimed for the Australian application) in countries members of the GPPH such as, for example, the USA, and where at least one claim in the corresponding application was found allowable. The claims of the Australian patent application must conform to the allowed claims of the corresponding application. If not already conformed, voluntary amendments to conform the claims of the Australian patent application to the corresponding allowed claims must be filed together with the GPPH examination request, this may incur additional attorney service charges.
Option 2: Direct request for expedited examination
A request for expedited examination must be filed giving a reason for expediting examination, for example: for commercial reasons such as licensing, that the invention is in a field of technology that is environmentally beneficial, or that the applicant is a small to medium sized enterprise.
It is worth noting that this request does not require an opinion from any other patent office to have issued (unlike GPPH). This can be a first instance examination, used to obtain a positive opinion from the Australian patent office to enable GPPH requests in other jurisdictions.
For both expedited examination options, a first examination report will typically issue around two-months from the expedited examination request, setting a 12-month period for acceptance. Examiners will typically issue a further opinion or acceptance within two-months of a response, so it may be possible to obtain acceptance quite quickly.
When can voluntary amendments be filed? Is there a deadline for doing so?
Voluntary amendments can be filed at any time after filing the application. There is no deadline for doing so. However, additional fees may be incurred, for incorporating amendments into the published specification before requesting examination.
Voluntary amendments can be filed before, at the same time as requesting examination, or shortly after, with no official fee payable, if it is desired that such voluntary amendments be considered when the examination starts. . There are no official fees for amendments made during examination.
Our standard practice is to request a postponement of acceptance when filing a patent application to ensure that the Applicant is provided with the opportunity to file voluntary amendments before the application is accepted.
Voluntary amendments to the specification, including to correct a clerical or typographical error, are possible after acceptance of the application before grant if the scope of the claims after amendments is within the scope of the claims before amendment. In this case, the voluntary amendments will be published in the Official Journal and a period of two-months will be set for anyone wishing to oppose the voluntary amendments. If no opposition is filed by the end of the two-month period, then the voluntary amendments can be allowed.
After grant, voluntary amendments can be filed, restricted to amendments that fall within the scope of the claims as accepted. An official fee is payable. There may be restrictions on amendments if there is ongoing litigation in relation to the patent.
What factors may influence a decision on a most appropriate time to request examination?
Typically, the decision on timing for voluntarily requesting examination is dependent on the applicant’s commercial and financial position, potentially also considering timing of other family applications. For example, it may be preferable for the applicant, from a commercial point of view, to either expedite examination or simply request examination, as early as the filing date of the patent application. Alternatively, it may be preferable for the applicant, from a commercial and/or financial point of view, to delay costs by delaying examination of the application. After national filing of the patent application, the deadline for requesting examination is five years from the filing date or, if a Direction to Request Examination issues by the Patent Office, the deadline is two months from the issuance of the Direction. Despite the existence of the deadline for requesting examination, the Patent Office would generally issue a Direction to Request Examination between around 18 months and 48 months from the filing date of the national application.
Australian Examiners will typically look at examination of corresponding applications in a patent family and rise similar issues from the comments in the foreign examination reports, if these seem applicable under Australian law. Similarly, Australian examiners often (but not always) find persuasive opinions on acceptance from other jurisdictions. In view of the approach, progress in the prosecution of corresponding foreign applications may be useful to consider in relation to whether or not to seek early examination or delay.
Is there any difference between the type of claim amendments that can be made before examination compared to during examination?
No. In all cases, if claim amendments or any other amendments to the specification are made, the scope of the amendments must not extend beyond the subject matter as originally filed – in other words, no additional subject matter can be introduced as a result of the amendments. Amendments are more restricted after acceptance.
- In Australia, it is possible to enter national phase early before the 31-month deadline, and as early as desired.
- In Australia examination must be requested and the timing of this request influences the processing timeline for the application more than the filing date.
- Examination can be requested as early as at the time of filing the application.
- Expedited examination can be requested either as a direct request to the Australian patent office, or via the Global Patent Prosecution Highway.
As one of Australia’s largest specialist IP firms, Griffith Hack has significant experience advising international clients and associates on all aspects of local national phase entry and examination request requirements.
If you have any further questions about early national phase entry, expedited examination requests, or any other aspect of IP in Australia, or if you would like to receive information on costs, please do not hesitate to contact Robyn or Sophie, or your usual Griffith Hack contact.