The Australian Patent Office has started issuing Pre-Examination Processing Notices. These notices are part of a trial in which the Patent Office is giving applicants an opportunity to submit voluntary amendments and/or comments prior to substantive examination commencing.
The notice will be issued about two months before an application is referred to an examiner and will include a list of prior art documents identified from search and/or examination reports issued in corresponding foreign applications. The Patent Office is hopeful that prompting the filing of pre-emptive amendments and/or comments will improve the efficiency of the examination process and allow applicants to better utilise the 12 month acceptance period.
In the latter regard, clients may be aware that the patent examination process in Australia is somewhat different to that in other countries. We are now (since 15 April 2013) given a fixed period of 12 months from the date of the first examination report to achieve acceptance (allowance) of an application. There is no specified response deadline but an application must be put in order for acceptance before the 12 month deadline. This means that multiple rounds of examination reports and responses may occur within the 12 month period.
Australia also has a deferred examination system in which applicants must specifically request examination, within five years from filing or two months from a Direction to request examination being issued by the Patent Office, whichever date is earlier. It may then be anywhere from a few months to well over than 12 months, depending on the technology involved, before a first examination report issues. As such, the timing of the first report is somewhat unpredictable and the applicant’s commercial objectives may have changed in the meantime. There may accordingly be some advantages to filing amendments just prior to examination commencing.
Watermark has adopted a practice of sending the Pre-Examination Processing Notices to clients immediately upon receipt. However, unless the applicant wishes to accelerate the examination process or wishes to present a different set of claims for examination, we recommend that no action be taken and we simply wait for the examination report to issue.
The trial is being conducted on 1,050 patent applications and will conclude by the end of March 2016. The Patent Office will then decide whether the process will continue.