In late 2013, IP Australia confirmed what many already knew, that there was a significant increase in their examination backlog due to the rush of examination requests received before 15 April 2013 in the lead-up to the commencement of the Raising the Bar reforms.[1]

As part of dealing with the examination backlog, IP Australia intended to restrict issuance of examination directions to applications that are 57 months from their filing date.[2] That would keep requests for examination to a minimum whilst they worked through the backlog.

However, it appears that IP Australia are working through the backlog more quickly than anticipated, as, in the last week, Fisher Adams Kelly has received a number of examination directions for applications with a filing date substantially less than 57 months prior.

Therefore we would like to remind our clients of the following important changes in examination procedure for Australian patent applications, which have come into effect under the Raising the Bar reforms:

  1. Examination must be requested within 2 months from the date of a direction to request examination, otherwise the application will lapse.[3] Before the Raising the Bar reforms, examination had to be requested within 6 months of a direction.
  2. A Statement of Entitlement, which details how the applicant derives rights to the invention, must be lodged when requesting examination. Previously, a Notice of Entitlement had to be filed before acceptance.
  3. Time to gain acceptance of the application has been reduced, from 21 months to 12 months from the date of the first Examiner’s report.[4]  That is, all issues in relation to an application must be resolved within a 12 month period of the first Examiner’s report.