Commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 in Australia on 15 April 2013 introduced a number of major changes for patents and patent applications. The more significant of these changes included: increased patentability standards, a reduction in time frames for examination, and the streamlining of patent opposition procedures. Commentary about this can be found here. In addition to these headline changes, there has also been introduced a new optional Preliminary Search and Opinion (PSO) and a new search fee, both of which warrant some mention.
Preliminary Search and Opinion (PSO)
The new PSO is optional and may be requested on standard complete applications filed on or after 15 April 2013 where a request for examination has not yet been made. The cost of requesting a PSO is AU$2,200.
As with the international-type searches which remain available for provisional patent applications, the introduction of the PSO provides applicants with the option of requesting a preliminary search to obtain an early indication of the patentability of their complete applications.
The PSO will provide a reasoned opinion on the patentability of the main invention of a complete application under Australian law, as well as an opinion in relation to examination issues such as clear enough and complete enough disclosure of the invention within the patent specification, clarity and succinctness and support of the claims, and unity of the claims. However, being a preliminary search and opinion, the PSO will not include an opinion on formality and entitlement issues unlike a substantive examination process.
It is important to note that the PSO is not intended to be a final or binding determination of the validity of an application and does not replace the usual substantive examination process. This new process is an optional supplement to the existing substantive examination.
Interestingly, the initial draft regulations proposed the PSO as a compulsory step to be carried out on all complete applications with the exception of PCT applications, convention and divisional applications, and applications which had been subject to an international-type search. However, following feedback from stakeholders, who expressed the view that a compulsory PSO would disadvantage Australian small-to-medium enterprises, the draft regulations were revised and have now resulted in the PSO being an optional step under the current Patents Act 1990.
As noted above, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 has also introduced a new search fee.
For standard complete patent applications filed on or after 15 April 2013, the respective applicants may be requested to pay a new search fee of AU$1,400 during examination. However, the new examination search fee will not be payable in respect of every standard complete applications filed on or after 15 April 2013. Rather, the fee will only be payable where no earlier “quality” search results – such as a search conducted by a foreign patent office on a corresponding application – are available and an examiner is required to conduct a full search at examination.
The new examination search fee will not apply to innovation patent applications which undergo substantive examination.
Whilst the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 introduces the new search fee following its commencement on 15 April 2013, there is still uncertainty surrounding how and when the new search fee will actually be applied by the Australian Patent Office (IP Australia). At this stage, IP Australia has only advised that the new search fee will not be implemented immediately and that stakeholders will be advised about how and when the new fee will apply at a later date.
When the draft regulations were initially released, the new examination search fee was proposed to be AU$1,710. The initial proposal was the same as the fee proposed for the PSO (AU$2,200) less the cost for requesting examination (AU$490). However, following feedback from stakeholders raising concerns regarding the quantum of the new search fee and the impact it would have on small businesses who file applications only in Australia, the new search fee was reduced to AU$1,400 under the current Patents Act 1990.
On one hand, the introduction of the new search fee brings Australia in line with a number of other major jurisdictions, such as the US and Europe, where separate search and examination fees are payable. On the other hand, the quantum of the search fee and the questions regarding how and when the new fee will apply, even months after commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, arouses uncertainty in its implementation.
Conclusion and Practical Advice
The introduction of a PSO provides patent applicants in Australia with the option of obtaining an early indication of the patentability of their complete applications. However, as mentioned, it is important to note that the PSO is not intended to replace the usual substantive examination process as it does not provide a final or binding determination of the validity of an application.
In relation to the introduction of a new examination search fee, there is still a lot of uncertainty about how and when the new fee will apply. As such, there will be a need to “watch this space” regarding the implementation of the new fee.
These new options will be of use for selected patent applications in given commercial circumstances.