31 March 2022

Patent Examination Delays are Rising at IP Australia

RisingIn my previous article I presented some data on Australian standard patent application prosecution events between 2017 and 2021.  While the total number of events (examination requests, examination reports, responses and acceptances) has remained fairly consistent in recent years, the data shows that the number of examination requests filed each year has increased since 2019, but that the number of first examination reports issued remained steady in 2019 and 2020, and fell in 2021.  All else being equal, this would suggest that the number of cases awaiting examination would have grown over this period, and therefore that the response time – i.e. the delay between an examination request being filed and a first examination report being issued – would be increasing.  So I decided to check this by analysing the delays for all initial examination reports issued since 2010.

Sure enough, what I have found is that the median delay has grown from just under seven months in 2019, to just over 11 months for examination reports issued so far in 2022 (although, being early in the year, this most recent data point is preliminary and may not be reliable).  At the same time, however, the 85th percentile has remained fairly stable, rising from just under 11.5 months in 2019 to slightly over 12 months so far in 2022.  The 85th percentile is significant, because IP Australia has a service level commitment to issue first reports on applications for standard patents within 12 months of receiving the request for examination, and to meet this commitment 85% of the time.  (At least, it used to have this target, although I have been unable to find a Customer Service Charter Report any more recent than the April-June 2020 quarter that still reports against this particular target.)  It appears, therefore, that despite an overall increase in examination response time for a ‘typical’ case, IP Australia is (just about) maintaining its targeted performance overall.

Even so, with what presently appears to be a growing backlog of applications awaiting examination, and a bumper year of new filings in 2021, it could become increasingly challenging for IP Australia to keep response times under control without increasing its patent examination capacity.  Furthermore, IP Australia’s own reporting indicates that some fields of technology – particularly chemistry, pharmaceuticals, and biotechnology – are experiencing greater delays than others, and falling well short of its targets.  IP Australia is not currently hiring new examiners, and the Australian budget papers released this week show no projected increase in average staffing numbers in the 2022-23 fiscal year.  But it will at least need to replace any staff who might leave.  And the March 2022 edition of its What’s New at IP Australia email bulletin (to which you can subscribe here) invited interested readers to register their interest in examination positions, to be notified when new vacancies are advertised.  Now might be a good time to register, particularly for prospective candidates with a background in chemistry, pharmaceuticals, or biotechnology.

Analysis of Examination Response Times

To analyse examination response times, I identified all applications on which a first examination report was issued from 2010 onwards, and obtained the delay in each case from the date of the corresponding examination request.  I excluded cases for which the applicant requested expedited examination, since these are advanced to the front of the queue and examined out of order.  To simplify the analysis, I also did not include cases that proceeded directly to acceptance without any examination report issuing – such cases are rare in Australia, because it is a standard practice by patent attorneys to request that acceptance be postponed to ensure that at least one examination report issues to allow the applicant an opportunity to make voluntary amendments.

For each calendar year, I calculated the median delay, and the 85th percentile.  (I also calculated the mean delay, however this so closely tracks the median there is little value in reporting both.)  The chart below shows the results.

Delay Between Exam Request and First Report

As can be seen, in 2010 the situation was not good, with examination response times exceeding 12 months in half of all applications, and delays of 18 months or more occurring in over 15% of cases.  My recollection is that IP Australia was then engaged in a concerted effort to improve response times.  In any event, by 2013 the median delay was down to eight months, and the 85th percentile was below 14 months.  Then came the Raising the Bar law reforms, which saw a huge spike in applications and examination requests shortly prior to commencement in April 2013.  This caused increased delays through 2014 and 2015, but by 2016 things were very much under control, with median response times down to six months, and the 85th percentile below the 12 month target for the first time in many years.

Since 2016, however, the median delay to examination has steadily increased, although the 85th percentile has remained relatively steady, at or just below 12 months.  While this means that IP Australia has continued to meet its performance target, it is hard to believe that this is sustainable, as the intervening 35% of applications are being examined in an ever-decreasing time window, while (presumably) a backlog of pending applications is building up behind.

I should note that the median estimate in the chart for 2022 may not be reliable.  It is, as yet, early in the year, and the sample size is relatively small.  Furthermore, there is no entirely reliable way to capture all recent examination events, and it is possible that some applications with shorter response times have not yet been picked up in my data, which would introduce a bias into the analysis.  However, the 85th percentile is likely to be more accurate, since it represents applications in which the examination request was filed at least 12 months ago.

Comparison with IP Australia Reporting

IP Australia regularly publishes information about its patent examination response times, broken down according to the different internal examination working groups.  At the time, of writing, this information was last updated on 8 March 2022.  A copy of the current table is included below.

Working Group As at 8 March 2022, processing examination requests filed in (or around)
CHEM 1 - Biotechnology October 2020
CHEM 2 - Chemical Compounds November 2020
CHEM 3 - Bio-therapeutics August 2020
CHEM 4 - Polymers and Applied Chemistry March 2021
CHEM 5 - Pharmaceuticals October 2020
ELEC 1 - Physics April 2021
ELEC 2 - Electronics and Communications May 2021
ELEC 3 - Computing April 2021
ELEC 4 - Data Processing and Measurements March 2021
MECH 1 - Mechanical Engineering March 2021
MECH 2 - Construction and Mining May 2021
MECH 3 - Process Engineering April 2021
MECH 4 - Medical Devices March 2021
MECH 5 - Packaging and Appliances March 2021

As can be seen, IP Australia’s information is consistent with my analysis, with a majority of working groups currently processing applications for which examination requests were filed typically 10-12 months ago (i.e. between March and May 2021).  However, there are a few notable outliers in chemistry, pharmaceuticals, and biotechnology where reported delays are as high as 19 months (i.e. August 2020 for applications in CHEM 3 – bio-therapeutics).

Conclusion – Bumper Filings in 2021 May Present a Challenge

In most fields of technology IP Australia has been doing a good job of maintaining a majority of examination response times at or below 12 months.  However, there are some areas – in chemistry, pharmaceuticals, and biotechnology in particular – in which applicants are being kept waiting for considerably longer, and well outside IP Australia’s performance targets.  Furthermore, there is evidence that a backlog of applications awaiting examination may be building up across the board.  With overall filing numbers having been slightly down in 2019 and 2020, IP Australia may be projecting that this will take care of itself over the next couple of years.  But in 2021 there was a jump in new applications to an all-time high.  If this is sustained, it is possible that IP Australia will need to start planning to increase its examination capacity in the near future.  That could be good news for aspiring patent examiners!


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