IP Reform - Reduced time frames for patents
5 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. The Act introduced changes to some of the timeframes involved in the filing and prosecution of a patent application. The information below is provided to help you understand the changes.
Changes to the timeframes for filing and prosecution of a patent application have been made to strike a balance between giving an applicant sufficient time to decide whether they wish to pursue examination of the application and reducing delays that are not in the interest of the public.
There have also been changes to some timeframes in relation to filing divisional applications and reducing the timeframe for examination of a patent application following the first report. These changes have been made to reduce delays in the finalisation of patent applications. This will reduce the uncertainty as to the scope of the eventual patent rights to the public.
The following changes will be made to patent timeframes:
- Time to respond to a Direction to Request Examination will be reduced from six (6) months to two (2) months.
- Time to gain acceptance will reduce from 21 months to 12 months for standard patent applications.
- Divisional applications must be filed no later than three (3) months from the Commissioner advertising the acceptance of a parent standard patent application.
- An amendment converting an application into a divisional application is not allowed:
- if the application has been accepted; or
- if the period in which the application could have been filed as a divisional application has expired.
How will these changes affect you?
The reduction in timeframes will require applicants and attorneys to respond more promptly to communications from us and to review relevant case management procedures and systems.
The changes relating to the filing of Divisional applications or the conversion of a patent application into a divisional application may also require earlier decisions to be made about divisional applications and a review of relevant case management procedures and systems.
Frequently asked questions
When do the reduced timeframes for responding to a Direction to Request Examination come into effect?
The reduction in time to respond to a Direction to Request Examination will apply to Directions issued by the Commissioner on or after 15 April 2013. There will be a two (2) month period to respond to the Direction.
For Directions to Request Examination issued by the Commissioner before 15 April 2013 there are six (6) months to respond.
If the applicant does not request examination within the response period the application will lapse.
When do the reduced timeframes for time to gain acceptance in examination come into effect?
Standard patent applications with an examination request on or after 15 April 2013 will have 12 months to gain acceptance after the date of issuing of the first Examination report.
Standard patent applications with an examination request before 15 April 2013 will continue to have 21 months to gain acceptance from the date of the issuing of the first Examination report.
What is a divisional application?
A divisional application is an application in which an applicant has 'divided out' parts of an earlier application. The applications are prosecuted separately from the other. If certain conditions are met the divisional application may retain the same priority date as the earlier application (parent application) and if a patent is granted it will have the same term as the parent application.
When do the reduced timeframes for filing a divisional come into effect?
Divisional applications filed on or after 15 April 2013 will have to be filed no later than three (3) months from the Commissioner advertising the acceptance of a parent standard patent application, assuming it has not lapsed, been withdrawn or been refused. The time frames for filing divisional applications in other circumstances, eg Innovations patents, have not changed.
When do the reduced timeframes for conversion of an application to a divisional application come into effect?
These generally apply to requests to amend filed (or deemed to be filed) on or after 15 April 2013 where the application or a request for examination of the application was also filed on or after 15 April 2013.
However note that the transition provisions cover a variety of situations and you should consult them to see how they apply to your particular circumstances.
What are the reduced timeframes for conversion of an application to a divisional application?
An application for a standard or innovation patent cannot be amended to convert it to a divisional application after it has been accepted.
Furthermore, if the period in which the application could have been filed as a divisional application has expired under new Section 79B, an amendment converting it to a divisional application cannot be allowed.
Last Updated: 15/9/2012
