A strategic tool available to patent applicants in Australia and New Zealand is the ability to manage the pace of patent prosecution. Delaying prosecution can help applicants preserve claim flexibility, maintain uncertainty for competitors, align patent rights with commercialisation timelines, and defer prosecution costs. In this article we share ways to slow down patent prosecution in Australia and New Zealand.
Unlike many other jurisdictions, in Australia and New Zealand, the first examination report sets a 12-month acceptance deadline to resolve all objections. This deadline does not change, even when further objections are raised in further examination reports. This differs markedly from European and US prosecution where there is no equivalent fixed end date for examination.
Despite the relatively structured timeline, we can use several strategies to help our clients slow patent prosecution.
How to slow down prosecution?
Request examination as late as possible
If delay is the objective, applicants should request examination as late as possible. Unless an earlier direction to request examination issues, the examination request deadline in both Australia and New Zealand is five years from the filing date.
IP Australia and IPONZ can take a considerable time to issue first examination reports after examination is requested. Current timeframes are approximately 18–32 months in New Zealand and 11–22 months in Australia from the request for examination, depending on the technology area. For example, mechanical inventions are generally examined sooner than biotechnology inventions due to examiner capacity in the respective fields.
Request postponement of acceptance
In both Australia and New Zealand, we can request postponement of acceptance. In that case, even if the application is otherwise ready for acceptance, it will not be formally accepted until either the postponement is withdrawn or (in New Zealand only) the acceptance deadline arrives.
Applicants can file responses addressing any objections promptly, while still delaying acceptance until near the end of the 12-month acceptance period. This reduces the risk of the application timing out because unresolved objections remain outstanding, while maximising the application’s pendency.
In Australia, it is important to withdraw the postponement of acceptance before the acceptance deadline. If postponement remains in place at the deadline, the application will lapse.
File divisional applications
In some circumstances, a divisional application can be used to effectively extend prosecution beyond the acceptance deadline.
In Australia, the divisional filing deadline is either three months from advertisement of acceptance of the parent, or at any time whilst the parent application is pending. If the acceptance deadline approaches and objections remain outstanding, a divisional can be filed to continue prosecution.
The strategy is more constrained in New Zealand. All divisional applications, including divisionals filed from earlier divisionals, must be filed within five years of the filing date of the original parent application.
To maximise delay, the divisional application can be filed as close to the applicable deadline as possible. The later the divisional is filed, the later examination can be requested and the later the first examination report is likely to issue, pushing the acceptance deadline out as far as possible.
File your desired claims later
In Australia and New Zealand, voluntary amendments can be made at any time while the application is pending. Those amendments can include filing an entirely new claim set, even after an examination report has issued.
You may choose to file your preferred claims later in the examination process. This provides more time to decide the claim strategy and keeps the preferred claims off the public register for longer.
The trade-off is that there may be less time to address objections and place the application in order for acceptance before the acceptance deadline. This risk is greater in New Zealand, where a divisional application may not be available if the five-year deadline has passed.
Don’t accelerate examination!
An obvious way to slow prosecution is not to request accelerated or expedited examination. Both countries participate in the Global Patent Prosecution Highway and also offer other acceleration pathways. These should be avoided if the objective is to keep prosecution moving slowly. However, even if acceleration has been requested, the above strategies (aside from delaying filing the request for examination) can still be used.
Practical tips to slow patent prosecution
Although the acceptance deadline ultimately limits how long patent prosecution can continue, there are practical strategies that can be used to slow the process and keep an application pending for longer:
- Request examination close to the applicable deadline.
- Request postponement of acceptance.
- File divisional applications as late as possible.
- Consider filing preferred claims later in prosecution.
- Avoid requesting accelerated or expedited examination.
Conclusion
Slowing patent prosecution involves a mix of deliberate action and deliberate inaction.
There are many reasons why applicants might want to slow down prosecution, from managing costs to monitoring market developments and competitor activity. In Australia and New Zealand, the acceptance deadline is the main limiting factor in the examination timeframe. Nevertheless, there are still steps that can be taken to keep an application pending for as long as possible.
If you’d like to discuss how these strategies can support your patent application in Australia and New Zealand, get in touch with one of our experts.
