15 March 2012

IP Australia Changes Expedited Patent Examination Practice

Speedy GonzalezFor many years it has been the practice of the Australian Patent Office to accelerate examination of a patent application upon request by the applicant.  The authority to expedite examination is bestowed by Regulation 3.17(2) of the Australian Patents Regulations 1991.

Recent experience suggests that this practice has changed, and the Office now requires an applicant requesting accelerated examination to provide reasons sufficient to satisfy the Commissioner of Patents that examination should be expedited.

Recent requests for expedited examination are being rejected.  The standard rejection letter includes the following explanation:

Sub-Regulation 3.17(2) provides that the Commissioner may expedite examination if “reasonably satisfied that:

        a)   it is in the public interest; or
        b)   there are special circumstances that make it desirable.”

As your request did not provide any supporting reasons I cannot be satisfied that the examination of your application should be expedited.  Accordingly your request is refused.  If you believe that there are valid reasons for expediting examination you may file a new request with our office that clearly sets out those reasons.

It therefore appears that requests for expedited examination must now provide satisfactory reasons.

PREVIOUS PRACTICE

At the time of writing, Section 2.13.4.3 of the Australian Patent Manual of Practice & Procedure (‘Examiners Manual’) still reflects the prior practice of the Office:

Applicants may request that the examination of an application be expedited (reg 3.17). The request can be made in writing or by phone.

[Electronic Records Administration (ERA)] will process any service request for expedited examination and then forward the expedited case to the relevant examination section. Expedited cases will appear at the top of the section's in-tray and are highlighted in red.

Exercise of a delegation under reg 3.17(2) is inherently carried out by:

        ERA processing the service request for expedited examination and
        forwarding the case to the appropriate examination section; and

        An examiner expeditiously examining it. Although there is no set time
        limit for examining expedited cases, these should be given priority over
        other (non-expedited) applications for which a request for examination
        has been made.

Reg 3.17(2)(b) is satisfied by the mere fact that the request has been forwarded from ERA to an examination section.

In other words, all that has been required up until now is for the applicant to request expedited examination, with or without substantive reasons.

REASONS FOR CHANGE

Following telephone enquiries by one of our colleagues, we understand that the reason for the change in practice is an increasing number of requests for expedited examination being received by IP Australia.

This is understandable.  After all, if examination of all applications were to be expedited, the result would be just the same as if none were expedited.  Long before this extreme situation arises, however, the effect of an excessive number of expedited examination requests would be an increase in the pendency of non-expedited cases.

This is clearly an undesirable outcome.  All else being equal, there is no good reason why all applications should not be examined in turn.

SATISFACTORY REASONS?

We anticipate that the Examiners Manual will be updated in due course to reflect the change in practice.  When this happens, we hope that some guidance will be provided as to the kinds of reasons which will satisfy Regulation 3.17(2)(b).

In the meantime, we can make a few suggestions (a.k.a. ‘guesses’) based on the practices of other patent offices, and general policy considerations.
  1. Suspected or anticipated infringement.  An applicant who has reason to believe that a competitor may be infringing allowable claims of a pending patent application may be able to request expedited examination on this basis.
  2. Impending product launch.  An applicant about to launch a product falling within the scope of allowable patent claims may be able to use this as a basis for expedited examination of an application, especially if the product in question is one which is particularly easy to copy.
  3. Investment opportunity.  An applicant looking at a potential investment (or acquisition), where the interested party is concerned about the investee’s IP position, may require expedited examination in order to provide greater certainty in an IP position, and add value to the investment/acquisition target.
  4. Patent Prosecution Highway (PPH).  An applicant may require examination of a foreign application (e.g. a US application) for some good reason (including any of the above).  If IP Australia has a PPH program in place with the relevant foreign office, the desire to obtain accepted claims which may form the basis for a PPH request in the foreign country may be sufficient reason to expedite examination.

ALTERNATIVES TO EXPEDITED EXAMINATION

If an applicant desires expedited examination, but is unable to supply a satisfactory explanation for this desire, there are alternatives available which enable an enforceable patent right to be obtained rapidly in Australia.

In particular, an innovation patent application may be divided from a pending standard patent application.  The innovation patent will be granted within approximately one month, and the patentee may then request examination and certification.  This occurs fairly rapidly, with a first action (examination report, or certification) typically being issued within one or two months.

The standard patent application will remain pending, in the ‘slow lane’, and can be progressed to grant at a later stage.

CONCLUSION

It is unfortunate that IP Australia would change a long-standing practice of this kind  without providing advance notice to stakeholders.  Indeed, the very reason for the change (increase in expedited examination requests) itself shows that there is a high level of interest among applicants in accelerating examination.

There is no question, however, that the Regulations permit the Commissioner of Patents to require substantive reasons before allowing examination of an application to be expedited.

At this stage, it appears that a satisfactory explanation is all that is required.  However, there does not appear to be any reason why the Commissioner could not require the submission of evidence (e.g. statutory declarations or affidavits) supporting the reasons given for a request.  This could significantly increase the burden on applicants requiring rapid acceptance and grant of a patent in Australia.

We will be keeping an eye on further developments on this issue.

6 comments:

Shill said...

Mark - I wonder if a valid reason for expedited examination might be: "to avoid the new acts and regulations in the raising the bar bill".  I can see a lot of applicants filing expedited exam requests in the next 12 months. 

Patentology (Mark Summerfield) said...

I doubt that IP Australia would see this as a valid reason!

In order to 'avoid' the provisions of the Raising the Bar Bill it is not necessary for an application actually to be examined prior to commencement.  It is sufficient that an examination request be filed.

So I agree that there will be a lot of voluntary examination requests filed in the lead-up to commencement, but these will not need to be expedited.

Justin Blows said...

I understand that an application relating to green technology will also be expidited.

Anon said...

Also the back log in the office is creeping up and probably all these cases that are being rejected as divisional cases has something to do with it.

Patentology (Mark Summerfield) said...

Interesting point.  Examination of all divisional applications is now automatically expedited, of course (even if they are 'legitimate' divisionals directed to a further invention), so this will certainly be pushing up the number of accelerated cases.

JP Atom said...

In Japan, some domestic small or micro entities are also entitled to request an accelerated examination.

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