IP Australia trialing pre-examination notifications

Article  \  10 Feb 2016

IP Australia is currently trialing issuing pre-examination notifications to patent applicants two months before their patent application is due to be examined. The notifications alert the applicant to the upcoming examination, and give the applicant two months to make final pre-examination amendments or submit comments for the examiner’s consideration.

For applications with equivalent overseas applications, such as US, European, or PCT applications, the notification lists any search or search and examination reports that have issued on those overseas applications, along with any documents cited in those reports. This is not a significant departure from typical IP Australia practice for the first examination report for such applications. Often the first examination report in Australia is a pure reiteration of objections raised in overseas jurisdictions, or raised in the written opinion in the case of PCT national phase applications. 

If there are no such overseas applications, the notification simply advises that the application is being processed for examination, and that IP Australia has not identified existing search or search and examination reports that may be relevant to the examiner’s consideration of the application.

Since the Raising the Bar reforms in April 2013, Australian patent applications must be accepted within 12 months of the first examination report issuing, irrespective of the number of examination reports that issue. That timeframe is tight by international standards. IP Australia hopes that the two month warning for upcoming examination will enable applicants to place their application in better form for examination and, therefore, make better use of the 12 month acceptance period. 

If used by applicants, this pre-examination initiative could result in fewer rounds of examination reports and responses for an application, potentially reducing examiner workload. However, the notifications are unlikely to reduce the overall cost of obtaining a patent in Australia. Submitting observations in response to a pre-examination notification will not be any cheaper for an applicant than responding to an examination report, and will in fact bring that cost forward. 

Pre-examination notifications are likely to have more value for some applications than others. The current timeframe between requesting examination at IP Australia and an examination report issuing varies from a few months to more than a year, depending on the application’s technology field. Requesting examination often prompts applicants to make pre-examination voluntary amendments to their Australian application, either to focus the application towards commercial embodiments of the invention, or as pre-emptive amendments in response to the examination of overseas applications. 

A pre-examination notification within two months of requesting application may be less likely to trigger voluntary amendments than a pre-examination notification a year after requesting examination, in which time overseas applications are more likely to have progressed.

The current trial is reportedly anticipated to run until the end of March 2016 and affect just over 1,000 applications.