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5.6.2.1 Request for Examination

Date Published

Key Legislation:

Patents Act:

  • s44 Request for examination
  • s45 Examination  
  • s223 Extensions of time  
  • s223A Computerised decision-making  

Patent Regulations:

  • reg 3.15 Requirements of request for examination
  • reg 3.16 Prescribed grounds and period for examination
  • reg 3.17 Requirement for Commissioner to direct or expedite examination

Related Chapters: ​​​​​​​​​​​​​​

Overview

The applicant must file a request for examination before examination of an application can commence (s44). If a request is missing, CEG should be notified.

Direction to Request Examination

The Commissioner may direct the applicant to ask for examination. A direction may be issued where any of the conditions specified in reg 3.16(1) are satisfied. Examiners are unlikely to be involved in the issue of directions, except where the applicant of an application for a patent of addition has requested examination of the additional, but has not requested examination of the parent (see 5.6.11 Patents of Addition).

Under s44(3), a person may require the Commissioner to direct the applicant to ask for examination. The Commissioner must give a direction, unless the applicant has already asked, or been directed to ask, for examination (s44(4)).

Where the Commissioner directs an applicant to request examination, the applicant must file the request within 2 months from the date of the Commissioner's direction.  Failure to do so, will lead to lapsing of the application. If examiners become aware of an application containing a request filed outside the 2-month period, and for which lapsing action has not taken place, the case should be referred to COG.

Alternatively, the applicant does not have to wait for a direction and may voluntarily ask for examination within 5 years from the date of filing of the complete specification (reg 3.15).

The final date to request examination in all circumstances is 5 years from the date of filing. If no examination request is made before this date (whether it is a voluntary request, or a request made following a direction) the application will lapse.

Note: The Commissioner has decided to issue directions by the use of a computer program. These directions are authorised by s223A. If the Commissioner is satisfied that the decision to issue the direction made by the operation of the computer program is incorrect, the Commissioner may substitute another decision for the computerised decision. If the Commissioner decides to substitute a computerised decision to issue a direction, the original direction is of no effect and is taken never to have been made. Any request to substitute a direction to request examination must be referred to Patent Oppositions for consideration.

Order of Examination

Applications should normally be examined in the order in which requests for examination are filed. However, exceptions to this practice include:​​​​​​​

  • Expedited examination;
  • where there are pending actions, for example, s223. In these situations, examination cannot commence until the actions have been completed;
  • where it is more efficient to examine cases with different dates together;
  • where examiners are waiting to receive non-patent literature from the library. Examiners should (if practicable) wait for a response from the library before commencing examination; or
  • where the request follows a direction to request examination given under s44(2).

Expedited Examination

Overview

Applicants may request that the examination of an application be expedited (reg 3.17).

Reasons provided for expedited examination

Subregulation 3.17(2) provides that, if requested, the Commissioner may expedite examination if ‘reasonably satisfied’ that:

  • it is in the public interest; or
  • there are special circumstances that make it desirable.

Consequently, the Commissioner requires a reason to be provided with the request for expedited examination.

Some non-limiting reasons include:

  • the invention is environmentally beneficial (‘green’ technology);
  • the applicant is a small to medium sized enterprise (SME). Examiners are not expected to assess whether the applicant is an SME;
  • there are pressing commercial reasons, such as the existence of a potential infringement; or
  • a valid request has been made under a Global Patent Prosecution Highway (GPPH) agreement or IP Australia-European Patent Office Patent Prosecution Highway pilot program.

Examination practice

CEG will consider and process any service request for expedited examination and then forward the expedited case to the relevant examination section. Expedited cases will appear at the top of the section's in-tray and are highlighted in yellow.

Examination of an expedited case is carried out in the same way as standard examination, only difference is the report should be issued within 8 weeks of the expedited examination request.

Where examiners receive a phone call from an applicant requesting expedited examination, the matter should be referred to a supervising examiner who will determine whether examination should proceed on an expedited basis.​​​​​​​​​​​​​​

Expedited Examination Under the Global Patent Prosecution Highway (GPPH)

Overview

The Global Patent Prosecution Highway (GPPH) is one of the initiatives that allow applicants to expedite examination.

Under the GPPH, where an applicant receives a ruling from one patent office that at least one claim in an application is allowable, the applicant may then request that another office expedite examination of the corresponding claims in a corresponding application.

The offices participating in the GPPH are known as Offices of Earlier Examination (OEE) and are listed in Annex A – List of Offices of Earlier Examination.

It should be noted the European Patent Office (EPO) is not a part of the GPPH program and has an independent PPH pilot program with IP Australia. In general, though, the procedures for applications expedited under the IP Australia-EPO PPH are similar to the GPPH.

Note that the GPPH program is not a mechanism for requesting expedited examination of an AU application where IP Australia was the ISA or IPEA and the PCT application is an Australian PCT application. In this situation examiners should follow the procedures in Application Does Not Meet GPPH Requirements below.

Requirements for Accelerated Examination Under the GPPH Pilot Program

There are three requirements for accelerated examination under the GPPH:

Requirement 1: The AU application must be appropriately associated with either an overseas application or a PCT application that has been examined by one of the participating OEE and had one or more claims deemed allowable/patentable.

The AU application can be associated with the overseas application in one of the following ways:

  • The AU application claims priority from the overseas application;
  • The AU and overseas applications are both based on the same PCT application;
  • The AU application and overseas application claim priority from a common priority document. The priority document can be filed in any jurisdiction;
  • The AU application is the priority document for the overseas application; or
  • The AU application is a divisional of an application referred to in any of the above.

The AU application can be associated with the PCT application in one of the following ways:

  • The AU application is the PCT application and it has entered national phase;
  • The AU application claims priority from the PCT application;
  • The AU application is a priority document for the PCT application;
  • The AU application is a divisional of an application referred to in the above points.

Requirement 2: Corresponding Australian Claims

All claims in the AU application must sufficiently correspond (or be amended to sufficiently correspond) to one or more of the allowable/patentable claims of the overseas or PCT application examined by the OEE.

Corresponding AU claims can be narrower in scope than the claims indicated as allowable/patentable. The claim can be amended to be further limited by an additional feature that is disclosed in the specification.

A claim which introduces a new/different category of claims to those claims indicated as allowable/patentable is not considered to sufficiently correspond. However, where Australian law allows variation in the category of claims, applicants may consider adapting their claims, for example to include product by process claims.

Requirement 3: Australian Examination Request

To proceed under the GPPH the applicant must file a request for examination and make a request to expedite examination under the GPPH. The request to proceed under the GPPH will often be in the form of a completed PPH request form. However, other formats are acceptable provided the required documentation are supplied (see below).

Examination under the GPPH can only be requested if examination of the application has not commenced, that is, a first report has not been dispatched.

Examiners should contact the PPH Contact Officer via the MDB-PPBRG-PPH mailbox where an application appears to be a GPPH application, but does not satisfy the requirements for accelerated examination under the GPPH, or does not include the required documentation as indicated below.

Documentation Required to Support a Request for Expedited Examination Under the GPPH

The following documentation is required:

  • A copy of one or more office actions issued by the OEE (or ISA/IPEA where they are also an OEE) that indicates the allowability/patentability of the claims being examined. The indication of allowable/patentable claims should follow substantive examination (that is, consideration of novelty and inventive step). Examples of acceptable office actions include a ‘Notice of Allowance’ or ‘Intention to Grant;
  • A copy of the claims examined by the OEE and, where appropriate, copies of subsequent amended claims, found to be allowable/patentable; and
  • An indication of the relationship between the AU claims and those of the OEE application. The indication can be in the form of a claim correspondence table,or may be indicated by a statement such as “Claims 1 – 20 as proposed to be amended correspond to claims 63 – 83 of the US application”.​​​​​​​

Sufficient correspondence of claims occurs where the claims are of the same, similar or narrower scope (see Requirement 2 above).

The applicant can either provide the office actions and copy of the claims with the request for examination under the GPPH, or request that IP Australia obtain the documents from the OEE’s Dossier Access System (DAS). The applicant must clearly identify the relevant information (document description and date) of the office actions and claims to be retrieved from the DAS on the PPH request form.

Examples of the OEE’s DAS include the USPTO’s Public PAIR system, UKIPO’s IPSUM system and WIPO’s Patentscope. 

Note that applicants may also file citations and translations of citations as part of the supporting documentation to allow for prompt consideration if they so desire.

Examination Practice - GPPH

Although requests for examination under the GPPH require the OEE to have found at least one claim to be allowable, examiners should consider all grounds of examination. In particular, examiners should have due regard to relevant issues and citations raised in FERs and search results. Examiners are not precluded from carrying out an original search if warranted.

Examiners should use their judgement in determining whether the claims are of the same or similar scope and in determining the extent to which reliance can be placed upon the conclusions of the OEE. This is in accordance with the procedures for using FERs.

When preparing the report, examiners should answer the relevant PPH questions in DocGen.​​​​​​​

Application Does Not Meet GPPH Requirements

If an AU application is filed as a GPPH application but does not meet the GPPH requirements (as outlined above), examiners should contact the applicant to seek clarification and inform them that the application does not meet the GPPH requirements, or request that the applicant file the required documents.

If the issues of GPPH requirements remain unresolved, examination should proceed as a standard expedited examination. Examiners should include a note under the Additional Comments section of the examination report that the GPPH requirements have not been met.

Examiners may contact the PPH Contact Officer via the MDB-PPBRG-PPH mailbox for any other issues regarding GPPH applications.

Expedited Examination Under the IP Australia-European Patent Office Patent Prosecution Highway

Background

The European Patent Office (EPO) and IP Australia commenced a comprehensive Patent Prosecution Highway pilot program on 1 July 2016. This is separate to the Global Patent Prosecution Highway. The pilot initially ran for a period of three years ending on 30 June 2019. It was later agreed to extend the pilot program for a further three years ending on 30 June 2022. Since then both offices have agreed to further extend the IP Australia-EPO PPH program permanently commencing from 01 July 2022.

Differences to GPPH

In general, the requirements and examination practice for the EPO-PPH program are similar to the Global PPH (see GPPH requirements), treating the EPO as an OEE.

An additional difference is English translations of any of the supporting documents should also be provided. Machine translations for the documents are admissible, but IP Australia may request applicants to submit a verified translation if they are insufficient.​​​​​​​

As with GPPH, examiners may contact the PPH Contact Officer via the MDB-PPBRG-PPH mailbox for any other issues regarding IP Australia-EPO PPH applications.

Amended Reasons

Amended Reason Date Amended

Fixed the broken link to Annex A - List of Offices of Earlier Examination.

Published for testing
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