What to expect when filing a patent in Australia?

To file a patent in Australia with the Australian Patent Office (APO) is unique because when you receive the first office action with its deadline, unlike in other countries, the deadline is a final deadline for acceptance due a year later. This means that you cannot keep on fighting office actions indefinitely if necessary. Fortunately, if you reach the final deadline without overcoming the objection in time you may file a divisional to keep the subject matter alive. An allowed set of US or European claims are pretty effective in overcoming Australia’s office actions, and in a lot of cases the same prior art will be cited, however, in some cases the same allowed set of claims will not overcome the objection.

Some countries are more accepting than others when it comes to missing a deadline. Australia’s IP Office is more forgiving and allows for the acceptance of an extension of time after a deadline is missed as long as it was unintentional. If it can be established that there has been an error or omission, or circumstances beyond the control of the applicant, which resulted in the deadline being missed, a declaration and additional extension fees for each month will be required.

When to file an amendment for a patent in Australia?

In Australia, an amendment can be filed in conjunction with filing a request for examination to defer the additional fee.

What are the PPH (Patent Prosecution Highway) requirements for a patent in Australia?

An applicant may request accelerated examination of their Australian patent application under the PPH:

1. when examination of a corresponding overseas or PCT application has been performed by one of the participating offices (including, for example, USPTO, CIPO, JPO, UKIPO, IPOS, KIPO); and

2. where the participating office has found at least one claim to be allowable.

For examination under the PPH, the claims of the Australian application must ‘sufficiently correspond’ to one or more of the claims considered to be allowable by the participating office. This means that the Australian claims may need to be amended to align with the allowed claims of a corresponding application. Typically, under the PPH, a first examination report will issue within 1 to 2 months from filing the request. A request for accelerated examination under the PPH can be made at the time of requesting substantive examination or any time before a first examination report issues.

To request PPH in Australia, the following documents are required:

• A copy of the Office Actions and Notice of Allowance issued by the Patent Office of the participating office that indicates the allowability/patentability of the claims;

• A copy of the claims examined and/or copies of subsequently amended claims found allowable/patentable by the Patent Office of the participating office; and

• A claim correspondence table (which we will prepare).

Expedited Examination

Alternatively, the Applicant may accelerate the examination of their Australian patent application by requesting an ‘expedited examination’ instead of PPH. A request for expedited examination must be supported with a reason as to why the examination should be expedited. However, a very simple reason (such as, ‘commercial reasons’) will generally suffice. There is no requirement for the claims of the Australian patent application to correspond to one or more allowed claims of a corresponding application, so the Australian claims will not need to be amended (if that is preferred). A first examination report will typically issue within 1 to 2 months of requesting expedited examination. A request for expedited examination can be made at the time of requesting substantive examination or any time before a first examination report issues.

When to file a divisional patent in Australia?

If a divisional application is desired in Australia, then it must be filed before or at the time of paying the grant fee.

Australian Patent Schedule of fees:

Official Filing fee: $250 (USD)

Official Examination fee: $335 (USD)

Official Examination fee (Australia was ISA): $205 (USD)

Official Extension fee (each month): $80 (USD)

Official Reinstatement fee: $165 (USD)

Official Issue fee (up to 20 claims): $170 (USD)

Official Issue fee (each claim 21-30): $85 (USD)

Official Issue fee (each claim in excess of 30): $85 (USD)

Official Renewal fee (4th anniversary): $210 (USD)

Official Renewal fee (5th anniversary): $215 (USD)

Official Renewal fee (6th anniversary): $230 (USD)

Official Renewal fee (7th anniversary): $245 (USD)

Official Renewal fee (8th anniversary): $265 (USD)

Official Renewal fee (9th anniversary): $290 (USD)

Official Renewal fee (10th anniversary): $330 (USD)

Official Renewal fee (11th anniversary): $395 (USD)

Official Renewal fee (12th anniversary): $480 (USD)

Official Renewal fee (13th anniversary): $585 (USD)

Official Renewal fee (14th anniversary): $710 (USD)

Official Renewal fee (15th anniversary): $865 (USD)

Official Renewal fee (16th anniversary): $1,050 (USD)

Official Renewal fee (17th anniversary): $1,270 (USD)

Official Renewal fee (18th anniversary): $1,515 (USD)

Official Renewal fee (19th anniversary): $1,790 (USD)