Delays in Examination in Australian Patent Office

The Australian patent system uses ‘deferred’ examination of standard, complete patent applications.  That is, these applications are examined only if the applicant requests examination and pays the requisite fee.  The applicant must request examination within five (5) years of filing a standard, complete application (which, for the national phase of an international application, means five years from the filing date of the international application).  In fact, the Commissioner usually directs the applicant to request examination earlier than this five year deadline, and the applicant must then request examination within six (6) months of that direction.  Unfortunately, the Australian Patent Office now has such a backlog of cases awaiting examination that a ‘Direction to Request Examination’ sometimes issues as much as four (4) years after the filing date.  Furthermore, once the applicant responds to the direction and requests examination, a delay of twelve (12) months or more may be expected before an examination report issues.  Thus there is commonly at present a delay of five (5) to six (6) years from filing the complete application to the date the first examination report issues.

The applicant can voluntarily request examination at any time before these deadlines, so if examination is desired in a shorter time frame applicants should consider making a voluntary request for examination at the time of filing the application, or at national phase entry. 

If even more prompt grant is desired, the applicant can also request that the examination be expedited.  In principle examination can be expedited only in special circumstances (such as where grant is required so that legal action may be initiated or in the case of genuine commercial imperatives), but in practice the Patent Office will expedite examination merely upon the request of the applicant; no extra fee is required.

Your usual contact at Griffith Hack will be able to give more detailed advice on any specific matter.

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