On 15 April 2013, the Intellectual Property (Raising the Bar) Act 2012 came into force in Australia, raising the standard of patentability.
This higher standard applies to all applications where a Request for Examination is filed on or after 15 April 2013. To avoid the increased requirements for patentability and the uncertainty that comes with a substantial change in the law, many applicants filed a Request for Examination prior to 15 April so their applications would be examined under the “old” law.
This has led to more than double the number of examination requests being filed in the 2012/13 financial year than the previous financial year. As a result, IP Australia has advised that the period between filing a Request for Examination and receiving a first report is expected to exceed their internal deadline of 12 months and may reach an average period of up to 19 months during 2014.
Additionally, this excess will affect the timing of IP Australia issuing directions to applicants to file a Request for Examination. Under Australian law, the deadline by which an applicant must file a Request for Examination is the earlier of five years from the filing date (international filing date for PCT applications) or two months from the receipt of a direction from IP Australia to do so. Due to the large number of examination requests filed, IP Australia will not issue a direction to file a Request for Examination until four years and nine months from the filing date. Of course, applicants are able to voluntarily file a Request for Examination prior to this date. It is also possible to request expedited examination if there are commercial reasons for doing so, or requesting examination under the Patent Prosecution Highway (PPH) scheme if the application meets the requirements for doing so.