15 July 2013

‘Raising the Bar’ on International Applications

GlobeMuch of the focus regarding Australia’s ‘Raising the Bar’ patent reforms has been on the substantive changes to the law, such as the higher threshold for inventive step, enhanced disclosure requirements, and the new utility standard.

However, there have been a number of procedural changes, also.  These affect all Australian applications, including those filed as the national phase of an international application under the Patent Cooperation Treaty (PCT).  Indeed, since most PCT applications are prepared to meet the substantive legal standards of a range of countries, including the US and Europe, it is probable that many international applicants will not be as much concerned about the legal reforms as about the procedural changes.

Applications filed prior to 15 April 2013 are theoretically able to proceed subject to the old law.  This includes PCT applications – for which the effective Australian filing date is the international filing date.  However, this is only the case if examination was also requested prior to 15 April 2013.  An examination request cannot be validly filed on a PCT application until after it has entered the national phase in Australia.  It therefore follows that any PCT application proceeding in Australia on or after 15 April 2013 must, by definition, be subject to the law and procedures as amended by the Raising the Bar reforms (including the implementing regulations).

The Australian National Chapter of the PCT Applicant’s Guide [PDF, 65 kB] has recently been updated to reflect the procedural changes introduced by the Intellectual Property Laws (Raising the Bar) Act 2012.  This seems like a good opportunity to inform (or remind) readers of the current requirements and processes during the national phase in Australia.

National Phase Entry Deadline

Australia permits the filing of national patent applications based upon a PCT application up until 31 months from the priority date.  This deadline applies regardless of whether the international application was subject to International Preliminary Examination (i.e. ‘Chapter II’) or not.

Extensions of Time

There is no automatic right to an extension of time if the 31-month deadline is missed.

However, in appropriate circumstances (e.g. in case of an error or omission on the part of the applicant, agent or attorney, or due to circumstances beyond the control of the person concerned) an extension may be granted.  It is necessary to provide adequate evidence to support the grant of an extension, and to pay the required extension fees.

In fact, there are no special rules in place for PCT applications – the general extension of time provisions in section 223 of the Patents Act 1990 apply to the national phase entry deadline, just as they do to most other deadlines set under the Act.


Patent applications are not automatically examined in Australia.  A request for examination must be filed along with the associated fee.  An examination request may be filed at the time of making the application or – in the case of a PCT application – entering the national phase in Australia.  Alternatively, filing of the examination request may be deferred until a later date.

In any event, the final deadline for requesting examination is five years from the relevant filing date.  In the case of a PCT application, the deadline is five years from the international filing date.

Additionally, the applicant must request examination if directed to do so by the Commissioner of Patents.  It is common that this occurs earlier than the five year deadline.  If a direction to request examination is issued, then the request must be made within two months of the date of the direction notice.  (Prior to the Raising the Bar reforms, this period was six months.)

Acceptance (Allowance) Deadline

The approval of an application for grant as a patent – which is known as ‘allowance’ in the US, and some other jurisdictions – is referred to as ‘acceptance’ in Australia.

For all PCT applications entering the national phase in Australia on or after 15 April 2013, the period within which all objections/rejections must be overcome, and the application accepted, in 12 months from the date of the first examination report (Office Action).

Prior to the Raising the Bar reforms, an additional nine months (i.e. up until 21 months from the first report date) was available, upon payment of monthly late response fees.  This still applies to applications for which the request for examination was filed before 15 April 2013, even if examination does not commence until after this date.


All requests for examination filed on or after 15 April 2013 must be accompanied by declarations as to the applicant’s entitlement to apply for and be granted a patent, and to claim priority of any earlier application.  Prior to the Raising the Bar reforms, these declarations could be provided at any time prior to acceptance of the application.

An applicant may, however, provide the entitlement details earlier in the application process.  In particular, PCT applicants have the option of providing entitlement details at the time of international filing, under PCT Rule 4.17(ii) and (iii).


Entering an international application into the national phase in Australia is relatively straightforward.

In a minimal case, an applicant is required only to provide:
  1. identifying details of the international application;
  2. a statement clearly indicating that the applicant is requesting entry into the national phase; and
  3. the filing fee.
The main procedural points to bear in mind are that:
  1. the national phase filing deadline in Australia is 31 months from the priority date;
  2. an extension of the time limit may be available if the failure to meet the deadline was unintentional;
  3. examination may be requested at any time, and must be requested within five years of the international filing date, or within two months of the Commissioner issuing a notice directing the applicant to request examination;
  4. the deadline for achieving acceptance of an application is now 12 months from the first examination report date; and
  5. Australia does not require assignment documents to be filed as proof of entitlement, but does require that a declaration of entitlement be filed no later than at the time of requesting examination.
If you have any questions about the national phase filing, examination and grant process in Australia, please feel free to ask in the comments below.

Image Copyright (c) 123RF Stock Photos


Bob said...

If an Australian national phase application (or convention application) relies on a re-filed priority application (where earlier application was abandoned) then IP Australia needs to be informed under S96.

There isn't any mention of this in the online filing system at IP Australia... any thoughts on the continued relevance of this section of the Act? Also, do you think it could raise issues of invalidity if IP Australia is not informed?

Mark Summerfield said...

Hi Bob,

This is no longer an issue. Section 96 was repealed by the Raising the Bar Act, and there is now no requirement to inform the Commissioner of the earlier abandoned or withdrawn application.

Section 96 was always problematic, so it's demise is a good thing! For earlier applications and patents, to which it applies, it is not clear (to me, at least) whether the failure to request that an abandoned or withdrawn application be disregarded creates a basis for revocation of a granted patent.

There are no grounds of post-grant revocation other than those under section 138, so the only applicable basis would seem to be that 'the patent was obtained by fraud, false suggestion or misrepresentation.' However, this ground requires that the patent would not have been granted, but for the applicant's misrepresentation, i.e. that it materially affected the Commissioner's decision (Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82, at [82]).

In most cases, the validity of the patent would be unaffected by whether or not the applicant has disclosed an earlier abandoned or withdrawn application. If the priorty claim complies with the Paris Convention, then it is good. If not, then the priority claim is bad, but the claims are still entitled to the Australian filing date, and a separate enquiry is required to determine whether they are novel and inventive, in view of any additional prior art. If not, then they are invalid on this basis, as well as (presumably) on grounds of 'fraud, false suggestion or misrepresentation'.



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