07 September 2013

IP Australia Confirms Impact of Reform on Patent Examination

FilesIn a news update sent out by email on 6 September 2013, IP Australia has confirmed what many of us already knew to be the case – that the rush of patent applications and examination requests in the lead-up to the commencement of the Raising the Bar reforms on 15 April 2013 has led to a significant blow-out in the examination backlog.

I presented figures back in April, shortly after the new laws came into effect, showing that in the final month under the former provisions over 6000 applications were filed (more than three times the long-term average filing rate), with half of those being filed in the week leading up to commencement. 

My Watermark colleague Geordie Oldfield subsequently published examination request numbers on the firm’s Intellectual Asset Management blog revealing an almost 40-fold increase in the rate of voluntary examination requests over the months prior to 15 April 2013.  In the final month, a total of nearly 22,000 examination requests were filed (around 1,700 in response to Patent Office directions, and over 20,000 voluntary requests).  This compares with a long-term average rate of under 1000 examination requests filed per month.

Additional 7-Month Examination Delay Expected

IP Australia has a Customer Service Charter, in which it sets out its commitments with regard to timeframes for completing various actions.  Currently, the Charter commits the Patent Office to issue a first examination report within 12 months of the date of filing of a request for examination.

IP Australia’s email update acknowledges the surge in examination requests, and goes on to explain that:

The main impact of this surge will be an increase in the pendency of first reports in coming years. Pendency is expected to increase in the December 2013 quarter, and is likely to exceed the 12 month customer service charter commitment by the end of April 2014. Based on projections, this could average up to 19 months at its peak during 2014, before returning to the 12 month commitment in early 2015.

Change in ‘Directions’ Practice

The primary mechanism for the Patent Office to regulate its workload is the ‘exam directions’ system.  When a patent application is filed in Australia, it does not automatically proceed to examination – the applicant is required to make a separate request for examination, and pay an associated fee.  However, an application cannot be kept pending indefinitely, and time limits apply for making the examination request, otherwise the application will lapse.  These time limits are either:
  1. five years from the filing date of the application; or
  2. within two months of the date on which the Patent Office issues a ‘direction’ compelling the applicant to request examination,
whichever is earlier.

IP Australia’s email update explains that, in response to the backlog of applications now awaiting examination, it has

… restricted directions to applications that are 57 months from filing date. This will keep new requests for examination to a minimum, while the enormous volume of pre April 2013 examination requests are processed.

If examination directions are issued at around 57 months from filing, corresponding requests will need to be filed by around 59 months from filing, which is only shortly prior to the five year deadline which applies in any event.

What If You Need a Patent Sooner?

Applicants requiring faster processing of their applications have a number of options in order to accelerate examination in Australia.

Firstly, it is not necessary to await a direction, and it remains possible to file a voluntary request for examination at any time after filing an application.  At the predicted peak of the delays, it may still take an average of 19 months before a first examination report is actually issued, but for newly-filed applications this is still on-par with many other patent offices.  For example, the USPTO’s Patent Dashboard is currently showing first Office Action pendency of 18.4 months, with a projected pendency of 16 months for new applications, based on July 2013 statistics.

Additionally, in certain circumstances it is possible to expedite examination of an application, either at the same time as filing a request for examination, or at any subsequent time.  The most common justifications for IP Australia to agree to expedite examination are that:
  1. the application relates to green technology;
  2. there are commercial reasons for requiring rapid examination (such as the need to secure patent rights for investment of commercialisation purposes, or because the applicant has reason to believe that a competitor may be infringing the prospective patent); and/or
  3. the application is eligible for examination under a Patent Prosecution Highway (PPH) program in which IP Australia participates.


Overall, it appears that IP Australia anticipates delays in examination of patent applications to persist for around two years.  It expects to revise the Customer Service Charter in 2014, presumably to ensure that it provides a realistic reflection of what applicants can expect, as well as an achievable target for the Patent Office to achieve.

In the meantime, applicants requiring more rapid processing of their applications should consider using one or more of the mechanisms available to advance further towards the front of the queue.

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