Saturday, June 18, 2011

How long will my client’s patent application take to get examined?

We are often asked for status updates on patent applications we are handling in Australia and New Zealand.  Most if not all of our northern hemisphere clients maintain docketing systems that track cases through the examination process.  These systems pop up reminders at regular intervals.

We deal direct with both the Australian Patent Office (IP Australia) and the New Zealand Patent Office (IPONZ).  Looking at their websites, one gives you a straight answer and one doesn’t.


IP Australia is fairly straight up.  Applicants must file a request for examination.  IP Australia issues a direction to request examination generally between 1 and 2 years after filing.  The request for examination must be filed within 6 months of the direction.

Then it is over to IP Australia.  They tend to issue a first examination report within about 14 months from the date of filing the request for examination.  This is certainly what they aim for.  They state in their charter that they aim to achieve this 60% of the time.  Fair enough.

By examination report I mean a report that includes an assessment of the claims for:

  • Patentable subject matter
  • Novelty
  • Inventive step (Obviousness)
  • Unity of invention
  • Clarity

IP Australia quite rightly state on their website that there is “usually no benefit in finalising your patent quickly unless you need to take immediate legal action against an infringer or require a granted patent for licensing or financing negotiations”.  If you need accelerated examination you write to them and ask for it.

New Zealand

I think IPONZ makes the answer to a simple question unnecessarily complex when describing their processing timeframes.

Applications filed with a complete specification are examined within 15 working days.  These include direct (ie non-PCT) applications, divisional applications, and provisional applications where the complete-after-provisional specification has been filed.

Unlike Australia, the first examination report in New Zealand does not always include a full assessment of the claims as described above.  The full assessment is often covered in a 2nd or subsequent examination report.

There is no straight answer when it comes to PCT national phase entry applications.  Such applications are divided into technology groups of biotechnology, chemistry, mechanical and electrical.  The website tells us which applications in each of these technology groups is being examined now.  This is interesting but not what our clients want to know.  Our clients don’t want to know which applications IPONZ is examining now.  They want to know when their own applications will be examined.

I ran some numbers today on our own unexamined patent cases.  Right now 84% of unexamined patent cases were filed up to 12 months ago.  Examination times for all cases are shown in the pie chart.

Patent examination times

If my firm's data is representative of IPONZ records then IPONZ could perhaps say that they aim to exam all applications within 12 months.  This would certainly be a clearer way to advise stakeholders.

Something else that could be clarified is the accelerated examination process.  Advancement of examination can only be made for “good and substantial reasons”.  The regulations state that an applicant needs to file a statutory declaration in support of the request for advancement.

This leads to the absurd outcome that it is potentially easier to file a divisional application out of a national phase entry application to advance examination.  Divisional applications are examined within 15 days of filing as mentioned above.

Where to from here?

New Zealand is currently putting in place a new Patents Bill.  In some but not all areas this will mean greater alignment with Australia.  It is hoped that New Zealand will adopt Australia’s practical and pragmatic approach to providing advice on examination times.

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