07 February 2016

A ‘Heads-Up’ for Selected Patent Applicants: IP Australia Trialling Pre-Exam Notifications

ChangeFrom 25 January 2016 IP Australia has commenced a trial of a pre-examination notification process.  Under this process, which will initially be applied to 900 pending patent applications, a ‘Pre-Examination Processing Notice’ is sent out approximately two months before the application is referred to an examiner.  This provides the applicant with an opportunity to make any last-minute amendments to the application prior to the commencement of examination.

I think that this is a positive initiative by IP Australia that coud be of great benefit to (some) applicants and examiners alike.  The Australian system of examination differs from many others – such as the US, Europe, Japan and China – where a new response deadline (of typically between three and six months) is set each time an examination report is issued.  In Australia, an acceptance deadline is set, providing a single fixed period within which all objections to the grant of a patent must be overcome, regardless of how many rounds of review and response are require to reach this point.

The Raising the Bar law reforms, which commenced on 15 April 2013, reduced the time available for securing acceptance of an application to just 12 months (down from 21 months) from the date on which a first examination report is issued.  In some cases this is ample time.  In others it is less so.  Providing applicants with an opportunity to ‘hit the ground running’ by making any required amendments shortly prior to examination has the potential to reduce the number of rounds of substantive examination during the 12-month period, leading to earlier finalisation of applications.  This will also hopefully take some pressure off applicants, examiners and attorneys, none of whom enjoy finding themselves up against a final acceptance deadline!

Pre-exam notifications will not be beneficial for all applicants, however.  There will be cases in which they may slightly increase the cost of obtaining a patent in Australia without providing the applicant with any corresponding benefit.  Whether there is, nonetheless, a net benefit to applicants and the administration of the Australian patent system is something that IP Australia will hopefully be able to evaluate through the current trial.

Why Would An Applicant Amend Before Examination?

As in many other jurisdictions (notably not, however, including the US), Australia operates an examination request system.  Under this system, an examination fee need not be paid at filing, and an applicant can delay requesting examination and paying the associated fee, typically for a number of years.  In practice, unless an applicant voluntarily requests early examination, an Australian application will typically not be examined until after any equivalents that may have been filed in major jurisdictions, such as the US or Europe.

This also means that a substantial period of time may have passed since the invention was first devised and an initial application filed.  Over this time the applicant may have revised their views as to the most innovative and commercially-valuable aspects of the invention.

Thus, by the time an Australian patent application comes up for examination there are reasonable prospects that the applicant may wish to amend, either in response to the outcome of examination elsewhere, or because the desired scope of patent protection has changed.

So Why Wouldn’t an Applicant Amend Without Prompting?

In a perfect world, patent applicants would amend all of their applications as soon as they became aware of some need or desire to do so.  In the real world, however, applicants rarely do anything that would bring forward costs that could just as easily be incurred later.  In the absence of a pre-examination notification, at best an applicant may be able to make an educated guess as to when examination of their application will commence, based on IP Australia’s published performance data.  Very few applicants bother to do this.  Often, the first prompt an applicant receives that it is time to pay some attention to their pending Australian patent application is when the first examination report issues.

IP Australia’s Trial Process

It is already standard practice at IP Australia to identify any available existing foreign search and/or examination reports prior to commencing examination.  Where such reports are available, relating to claims of the same or simialr scope as in Australia, in most cases the foreign objections/rejections will be reproduced in the Australian Examination report.

Under the current trial, a ‘Pre-Examination Processing Notice’ is sent out shortly before examination commences, but after a check has been conducted for existing search/examination reports.  All notices advise that the ‘application is being processed for examination and will be referred to an examiner in 2 months.’

Where no existing reports have been identified, a ‘basic’ notice is issued which states that:

In preparation for examination, IP Australia routinely identifies existing search or search and examination reports that may be relevant to the examiner’s consideration of the application. In the present case no existing reports have been identified.

You are nevertheless invited to file amendments and/or comments, within 2 months of the date of this notice, that address potential grounds for objection.

In the case that there are existing report(s), a ‘detailed’ notice is issued which states that:

In preparation for examination, IP Australia has identified a number of existing search or search and examination reports that are relevant to the subject matter of the present application. The documents appearing on the attached sheet(s) have been cited in those reports and will be considered with other matters in the Australian examination.

You are invited to file observations and/or amendments, within 2 months of the date of this notice, addressing the novelty and inventive step of the claimed invention with respect to these documents. You are also invited to address any other issues that have been raised that may be relevant under Australian law. e.g. unity of invention and sufficiency of disclosure.

Both types of notice point out that:

By addressing these issues before examination commences you will obtain a more focussed examination report and be better able to utilise the time available to obtain acceptance.

Added Cost in Some Cases?

The vast majority of applicants for Australian patents are represented by local patent attorneys (such as myself).  Upon receiving a communication from the Patent Office, we have an obligation to report that correspondence to our client, and to provide them with relevant advice on any action that should be taken in response.  We are also responsible for monitoring deadlines and ensuring that necessary actions are taken within the time limits set by the Office.

The pre-examination notices prompt for a response and set a deadline.  Tis gives patent attorneys some work to do and – unless we are prepared to throw in this service for free – results in costs being incurred.

In cases where the applicant is then able to take steps to address anticipated objections, and perhaps avoid any subsequent examination reports, the overall cost of obtaining an Australian patent is unlikely to increase, and may even be slightly reduced.

However, where no action is taken in response to a pre-examination notice, it represents an additional administrative overhead and, in most cases, an increase in costs – albeit one that is likely to be fairly negligible relative to the overall cost of obtaining a patent.

Conclusion – Good Idea or Bad? The Trial Will Tell!

As I noted at the outset, I think that IP Australia’s trial of Pre-Examination Processing Notices is a positive initiative.  The 12-month acceptance period can pass surprisingly quickly, and giving applicants a heads-up prior to issuing a first examination report could be very helpful in some cases.

Furthermore, in any case where a response to a Pre-Examination Processing Notice reduces the number of substantive examination reports issued, it is likely that this would represent an improvement in efficiency of examination, without any net increase in costs (and, possibly, a saving).

However, if it turns out that applicants are not inclined to respond to Pre-Examination Processing Notices in significant numbers, then I would conclude that they are imposing a net additional cost upon the system.

Presumably this is the purpose of IP Australia’s trial, i.e. to see whether applicants take advantage of the opportunity to amend/comment, or not.  My rather pessimistic guess is that relatively few applicants will respond.  Most will be foreign companies with weightier matters on their mind than pre-amendment of their Australian patent applications, and two months is not a particularly long time within which to obtain substantive response instructions, typically via an overseas attorney or agent.  Hopefully IP Australia will break down its results to look at differences in behaviour between Australian and foreign applicants, and between applications with foreign search/examination reports and those without.  I can see real potential in a pre-exam notification practice, but perhaps only if it is targetted at those applicants who are most likely to benefit.


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