IP Reform - Searches and Search fees for patent applications
5 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. The Act introduces a new Preliminary Search and Opinion (PSO). The PSO is optional and may be requested on standard complete applications filed on or after 15 April 2013. The information below is provided to help you understand these changes.
The PSO is optional and can be requested on standard complete applications prior to submitting a request for examination. The PSO was introduced to provide the applicant with an early indication of any shortcomings in their application. It can also provide the public with useful information about the likelihood of a patent being granted and the likely scope of any monopoly. The fee for a PSO is $2200.
Previously Article 15(5) - international-type searches were available for both complete and provisional applications and there was no provision in the old legislation for a PSO or for a search fee at examination.
From 15 April 2013, Article 15(5) searches will no longer be available for complete applications and applicants will need to request a PSO if they want a search done on a complete application outside of examination.
IP Reform also permits us to charge a search fee for examination of standard complete applications filed on or after 15 April 2013. During examination, an applicant may be required to pay a search fee of $1400 for applications filed on or after 15 April 2013. This examination search fee will not be implemented immediately and stakeholders will be advised about how and when the new fee will apply at a later date.
Frequently Asked Questions
How much will a PSO Cost?
The cost of a PSO will be $2200.
Will the PSO be published? If so when?
The PSO will be made available on our website when the application becomes open to public inspection, normally 18 months after the priority date.
When can a PSO be requested?
A PSO can be requested on a standard complete application before a request for examination is filed.
What will be covered in a PSO?
A PSO will include a search of the main invention and will provide a reasoned opinion under national law requirements in relation to novelty and inventive step as well as patentable subject matter. It will also include an opinion in relation to other examination issues that may be applicable including lack of unity, clear enough and complete enough disclosure, support, clarity and usefulness.
What will not be covered in a PSO?
A PSO will not include consideration of a number of other issues including entitlement and formalities.
How do I respond to a PSO?
A PSO is only issued once and you do not formally respond to the opinion as you would to an examination report. However, you can respond to issues raised in the opinion by filing proposed amendments to your application which will be considered when the application is examined.
Will I be able to request an Article 15(5) search on a complete application on or after 15 April 2013?
No. An Article 15(5) search will only be available for provisional applications from 15 April 2013 and must be requested within 10 months from when the provisional was filed.
Which applications may be subject to the new search fee at examination?
The search fee as part of examination may be applied to complete applications made on or after 15 April 2013.
Will the new search fee at examination apply to innovation patents?
No
When will the new search fee at examination be introduced?
As indicated above, the search fee at examination may apply to applications filed on or after 15 April 2013. We do not intend to immediately request search fees at examination upon implementation of IP Reform on 15 April 2013.
Last Updated: 15/9/2012
