17 November 2021

Raising the Bar Has Not Reduced the Patent Acceptance Rate in Australia

High JumpData on patent acceptances into 2021 confirms that the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (‘RtB Act’), which came into effect on 15 April 2013, has had a minimal impact on the rate of patent application acceptance in Australia – and to the extent that an effect is present, it does not run in the direction that might be expected!  Here, I define ‘rate of acceptance’ as the proportion of examined applications that go on to be accepted for grant.  Between 2009 and 2013, the rate at which applications subject to the former (i.e. pre-RtB) provisions were accepted rose from 69% to 72%.  In comparison, the acceptance rate of post-RtB applications has stabilised at around 75% in each year between 2017 and 2021.

Some people may have anticipated that, in raising the standard of inventive step and introducing stricter requirements for enablement and support of claims, the RtB reforms would result in fewer applications being accepted.  I was not one of those people, and I expect that neither were most other patent attorneys.  Those of us who work on behalf of patent applicants are well-aware that, firstly, most of those applicants are seeking patent protection in other jurisdictions that have high standards of patentability, and are not wasting time and money on equivalent Australian applications for inventions that do not meet those standards.  And, secondly, encountering a higher bar to acceptance does not necessarily mean abandoning the application altogether; often it may simply mean settling for a more limited scope of protection.

Perhaps more surprisingly, however, raising standards of patentability has not resulted in applicants making more rounds of amendment to their applications in order to achieve acceptance.  In fact, if anything applications examined under the post-RtB provisions have been, on average, subject to fewer amendments in examination than pre-RtB applications.

Interestingly, in the transition between the two legal regimes, the earliest applications to be examined under the provisions of the RtB Act had acceptance rates in excess of 90%, while acceptance rates of the last applications to be examined under the former provisions fell to below 50%.  These effects are most likely attributable to the respective applicants’ strategies in pursuing early examination of post-RtB applications, and in persisting to the bitter end with some pre-RtB applications.

Another interesting observation is that expedited examination has become increasingly popular in the years since the RtB reforms commenced, rising from just under 6% of all cases in 2014/15 to over 8% in 2020/21.  In particular, expedited examination under the Global Patent Prosecution Highway (GPPH) program rose from just 2.7% of cases in 2013/14 to 5.1% in 2019/20.  In fact, GPPH requests were the majority of all expedited examination requests in every post-RtB year except for the first (2013/14).

Finally, the most recent data confirms (once again) that the duration of patent prosecution (i.e. from examination request through to acceptance, in successful cases) has reduced significantly – from a median of over 600 days, to a little more than 400 days – since commencement of the RtB reforms.  This has been due, in almost exactly equal parts, to the tighter time constraints imposed on applicants, and to reductions in Patent Office delays in commencing examination after a request has been filed.

Data and Definitions

In looking at the effect of legislative changes on application outcomes, we are interested only in those applications that actually undergo examination.  While applicants can (and do) abandon applications earlier in the process (e.g. by failing to request examination when required, or by not paying a required annual maintenance fee), we can say nothing about what would have happened had these applications been examined.  All of the following data and analysis is therefore based only on those applications for which an examination request was filed, and at least one examination report issued.

It is also only useful to look at statistics for applications that have actually been finalised.  Again, we cannot say much about those applications that remain pending and could still go either way.  For present purposes, a final outcome, or ‘disposal’, in any given case is either acceptance of the application (i.e. successfully passing examination), or failure due either to a refusal by the Patent Office or (overwhelmingly more commonly) lapsing of the application without overcoming objections that have been raised by the examiner.

An acceptance rate can then be defined as the number of applications accepted divided by the total number of disposals (i.e. acceptances plus failures) during a given time period.  The RtB reforms commenced on 15 April 2013, and it is therefore convenient to analyse outcomes over 12-month periods commencing on 15 April each year, and ending on 14 April of the following year.  Thus, for example, the time period ‘2015/16’ refers to the 12 months between 15 April 2015 and 14 April 2016, inclusive.

Finally, in order to interpret the data it is necessary to be aware of the transition provisions in the RtB Act.  Specifically, the revised laws apply to any application for which a request for examination was filed on or after 15 April 2013, while the less stringent pre-RtB provisions apply where the request for examination was filed prior to that date.  (Note that the RtB Act necessarily applies to applications that were filed in Australia on or after 15 April 2013, since it is not possible to request examination of an application that has not yet been filed!)

Acceptance Rates Before and After Raising the Bar

The chart below shows the acceptance rate of applications based on the year of disposal, from 2009/10 to 2020/21.  The results are broken down into those applications that were examined under the pre-RtB provisions, and those that were subject to the post-RtB provisions.  Prior to 15 April 2013, all finalised applications were, by definition, pre-RtB cases.  By 2017/18, the number of pending applications remaining for which examination had been requested before 15 April 2013 was negligible.  Between 2013/14 and 2016/17 there was a period of transition, during which applications being finalised consisted of a mix of pre-RtB and post-RtB cases.

Outcomes for examined applications by date of disposal

As can be seen, in the years prior to the RtB reforms acceptance rates had been rising, from just under 70% in 2009/10 to 72% in 2012/13.  Following the transition period, acceptance rates of post-RtB cases have settled at a fairly steady level between 74% and 75%.  Clearly, despite having raised patentability standards, the RtB reforms have had little impact on the likelihood that an examined application ends up being accepted.  If anything, acceptance rates are now slightly higher than they were prior to the reforms.

The transition period is interesting.  Acceptance rates of pre-RtB cases initially increased before crashing to below 40% in 2016/17, when nearly 3,800 remaining pre-RtB applications were finalised.  This can be explained as follows.  Applicants intending to proceed with their applications after receiving a first examination report would have responded well within the available time limit (then 21 months), leading to a greater proportion of acceptances in the early part of the transition period.  On the other hand, abandoned applications – i.e. those that the applicants had decided not to pursue after receiving an examination report – would not have lapsed until the time limit expired, resulting in a greater proportion of ‘failed’ applications emerging in the later part of the transition period.

Post-RtB cases initially experienced exceptionally high acceptance rates, which might seem counter-intuitive given that they were subject to the new, enhanced, patentability requirements.  But it must be kept in mind that, in order to be finalised so early in the post-RtB era, the applicants would have needed to voluntarily request examination (most likely expedited), and respond quickly to any examination report that may have been issued.  These were, therefore, highly motivated applicants who were probably quite confident of success (e.g. based on outcomes in other jurisdictions).  Furthermore, any of these applications that were abandoned would not have lapsed until the time limit (now 12 months) expired after a first examination report issued, leaving very few ‘failed’ applications to reduce the acceptance rate during the early part of the transition period.

Examination Requests Before and After Raising the Bar

Applicant behaviour during the transition to the Post-RtB era can be confirmed by looking at examination request data.  Under the Australian system, examination is not automatic following filing.  Applicants must separately request examination (and pay a fee).  This may be done voluntarily at any time.  There is, however, a deadline, which is either five years after filing, or when directed by the Commissioner of Patents – whichever is earlier.  The Patent Office generally issues directions well within the five-year time frame, to keep applications moving and to ensure a steady pipeline of work for patent examiners.  As we shall see, the majority of applicants (typically 65-75%) do not voluntarily request examination before they are directed to do so.

The chart below shows, for each 12-month period (still using the 15 April start date), the number of applications filed, and the number of examination requests.  Generally, examination requests sit below the number of filings, because some applicants abandon their applications by failing to request examination when directed.  Also, examination requests typically lag behind application filings, because of the delayed direction practice described above.  However, this pattern was broken during the lead-up and transition to the RtB reforms.

Total annual filings and examination requests

While it appears that there was a dip in examination requests in 2011/12, this was in fact a ‘normal’ year.  The exceptional years are 2009/10 and 2010/11, when the Patent Office issued a particularly high number of directions, presumably in order to reduce a growing backlog of applications.  In 2012/13, a huge spike in examination requests is synchronised with a spike in filings, as many applicants filed voluntary requests, and brought forward any available new applications, to take advantage of the final opportunity to be subject to the less stringent pre-RtB laws.

Given the growing – and expected – number of voluntary requests, the Patent Office all but stopped issuing directions in December 2012.  Only 156 directions were issued in the entire 2013 calendar year, resulting in a historically low number of requests, most of which were voluntary.  This created a growing backlog of applications with which the Office needed to catch up in subsequent years.  In the 2016/17 period, over 24,000 examination directions were issued and – for perhaps the first time ever – the number of examination requests exceeded the number of new applications filed during those 12 months.  We have since returned to a period of normality, with examination requests now sitting where they belong, below and behind the corresponding new filing numbers.

This explanation of applicant behaviour is further illustrated by the following chart, which shows the proportion of examination requests in each 12 month period that were voluntary (i.e. not directed by the Patent Office). 

Proportions of voluntary examination requests

Prior to the RtB reforms, the rate of voluntary examination requests was typically a little over 20% of all requests.  This grew to over 70% in the lead up to commencement of the RtB Act.  Furthermore, in the 12 months following commencement, nearly 80% of all examination requests were voluntary, reflecting the very small number of directions that were issued during this period.  Interestingly, requesting examination without waiting for a direction to issue appears to be more popular now than it was a decade ago, with about a third of all examination requests being voluntary.  I confess to being a little surprised that the rate is this high.

Expedited Examination After Raising the Bar

Largely out of curiosity, I have also looked at rates of expedited examination since the commencement of the RtB reforms.  Any applicant can request that examination of their application be expedited in Australia, for a number of reasons, and with no additional official fee payable.  The most common reasons are ‘commercial need’ (which includes providing certainty for investment, commercialisation, or infringement purposes), and acceleration under the Global Patent Prosecution Highway (GPPH) program.

The chart below shows the proportion of all examination requests that were expedited in each 12 month period since 2013/14.

Proportions of expedited examination requests

It is hard to draw any firm conclusions from this relatively short and variable sequence of data points.  It is probably not very surprising that with a high proportion of voluntary examination requests in 2013/14, a relatively high fraction of these were expedited.  It also appears that the GPPH program has become more popular in recent years, now making up around 5% of all examination requests, and more than half of all requests to expedite.

Why Have Acceptance Rates Not Fallen After Raising the Bar?

So why have acceptance rates not dropped with the lifting of patentability standards?  One possible explanation is that the Australian standards do not matter very much.  Most applications originate in foreign jurisdictions – particularly the US – that have long maintained high standards, and therefore might simply have more comfortably exceeded the Australian requirements prior to the RtB reforms.  Another possibility is that applicants may now be encountering objections that might not have been raised in the past, but are willing to make additional concessions to overcome those objections, settling for a more limited scope of protection than would have been available under the former laws.

There is very limited information that is readily available to investigate these theories.  You might think that if applicants are receiving additional objections, this would be reflected in higher numbers of examination reports being issued and responses filed with amendments.  The problem with trying to use reports and responses as a metric is that the standard practice of almost all Australian patent attorneys guarantees that at least one examination report issues in most cases.  Furthermore, at least one amendment is typically filed in foreign-originating cases (making up over 90% of all applications) with the purpose of conforming the patent specification and claims to local norms.  When I ran the numbers, I found that the average number of examination reports/responses on all accepted applications is around 1.3 to 1.4, and this did not change systematically across the pre- and post-RtB periods.

A little additional detail is available for accepted cases, namely the total number of amendment ‘items’ considered by the examiner and incorporated into the final patent specification.  In normal attorney practice, an ‘item’ is one group of amendments made to an element of the patent application (e.g. description, claims, or drawings).  A common form of response involves two amendment items: an amendment to the claims (perhaps to overcome an objection); and a corresponding amendment to the description (to maintain correspondence with the amended claims).  Counting amendment items also has the advantage of including amendments that may be filed voluntarily, and therefore not reflected in report/response numbers, such as amendments submitted in anticipation of examination.

The chart below shows the average numbers of amendment items for applications accepted within each 12 month period, divided into pre- and post-RtB cases.

Average number of amendment items by date of acceptance

It appears that, for many years, the average number of amendment items prior to acceptance for pre-RtB applications was consistently around 2.5.  This rises during the transition period for the simple reason that the applications which took the longest to be accepted are, by definition, more likely to include those that had more protracted examination proceedings, involving larger numbers of amendments.  (By way of evidence for this,the 95th percentile for pre-RtB amendment items in 2015/16 and 2016/17 is 6, compared with 5 in earlier years.)

For the post-RtB cases, those that were accepted in the earlier years had fewer amendment items on average.  This again reflects the fact that many of the early acceptances were of applications by highly motivated applicants who may have based their Australian strategies on successful outcomes in other jurisdictions, enabling them to place those applications in order for acceptance with fewer amendments. 

What is surprising, however, is that post-RtB acceptances have clearly settled to a slightly lower average number of amendment items than pre-RtB cases.  It appears that something is different – possibly a more focussed approach to Australian prosecution given the shorter timeframe (12 months, as compared with 21 months pre-RtB) now allowed to achieve acceptance – but the hypothesised correlation between higher legal standards and more amendments simply does not exist.  Maybe applicants actually made additional amendments under the pre-RtB standards in order to broaden their Australian claims compared to equivalent foreign applications?  Maybe the reforms have genuinely had no effect?  Unfortunately, there is not (at present) any readily available data, or suitable analysis methodology, to test these (or other) theories.

Did the Raising the Bar Reforms Have Any Measurable Effect?

Based upon readily available data, the above analysis does not reveal any really substantial differences in examination outcomes or behaviours before and after the RtB reforms, outside of the transitional period.  This does not mean that there has been no effect on substantive outcomes (such as claim scope), merely that any effect that is present is not measurable using this data.

However, one thing that can be measured, and that has changed dramatically following the RtB reforms, is examination pendency, i.e. the time (delay) between filing an examination request and disposal of the application.  The chart below shows, for successful applications, median delays (in days) between: the request and a first report being issued (purely Patent Office delay); the first report and acceptance (a mix of applicant and Patent Office delays); and the total time from examination request to acceptance.

Median delays from examination request to acceptance

Since 2007/08, the median total delay has come down from nearly 800 days, to just over 400 days.  In large part this has been due to the efforts of the Patent Office in reducing the median delay in issuing a first examination report by more than 50%.  But it is also due to the effect of the RtB reforms on applicant behaviour.  Under the old rules, applicants had 21 months after the first report issued within which to achieve acceptance.  There was a price signal to encourage finalisation within 12 months, in the form of fees that became payable after this period.  As the chart shows, the effect of this was that the median delay between the first report and acceptance was consistently close to a year.  Now, applicants face a hard acceptance deadline at 12 months from the date of the first report.  This change immediately resulted in applicants responding more rapidly to the initial report, bringing the median delay to acceptance down to a consistent period of around 220 days.


The RtB reforms were intended to raise standards of patentability in Australia, particularly in relation to inventive step and the levels of disclosure and technical contribution required to support a given scope of patent claims.

Readily available data on patent examination activity does not provide evidence of substantial changes in outcomes since the reforms commenced.  The proportion of applications that are accepted following examination, and the number of amendments made by applicants in achieving acceptance, have barely changed.  If anything, they have gone the opposite way to what might have been expected: acceptance rates are now slightly higher, and counts of amendment items slightly lower, than prior to the RtB reforms.

There is, however, much about the examination process that is not visible in this data.  We cannot see, for example, whether the types of objections being raised by examiners have changed, or whether the nature and scope of amendments proposed in response are any different between pre- and post-RtB applications.

On the other hand, applicant behaviour has been significantly affected by changes to examination deadlines, with the desired result that median examination delays have been slashed by almost half since 2008.  Whether related or not, applicants also now appear to be making more use of expedited examination procedures, particularly through the GPPH program – which is good for the Patent Office, insofar as GPPH applications enable examiners to leverage work already done in other jurisdictions.

It is possible that these procedural changes in applicant behaviour are confounding efforts to observe changes due to the substantive legal reforms.  An applicant may wish to pursue broader claims against the more stringent standards, which could lead to additional rounds of examination and amendment.  On the other hand, tighter time constraints serve to encourage more economical prosecution, involving fewer rounds of examination. 

Of course, it is also possible that most applicants rarely sought the broader scope of protection that was potentially available in Australia under the old standards, in any case.  If that is so, then while the bar has been raised to block a minority of applicants who did take advantage of the pre-RtB standards, a large-scale effect on overall examination outcomes may simply not exist.


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