Expedited and modified examination for Standard Patents


You can request that your application be examined faster, this is known as expedited examination. This may be helpful if you are seeking to enforce patent rights or an investor requires a granted patent before investing in your invention.

After a patent application has been filed, a request for expedited examination can be made, setting out the reasons why you need your application to be considered more quickly.

Eligibility for expedited examination will depend on the circumstances of the case in question. One reason deemed to be suitable is if the application is considered to be in the field of 'green technology'.

You should be careful about expediting. Early examination and grant of a patent can have unexpected results. For example, if your application has already been granted in Australia, it may limit your ability to change the specification if you encounter problems when applying for a patent in other countries.

Many applicants are happy to proceed to examination using the normal process because it provides them with time to develop and plan the commercialisation and marketing of their invention before committing to a greater financial outlay.

Remember that when granted, your patent rights can be retrospectively enforced from the publication date of your complete application.

Modified examination

If you have applied for a standard patent in Australia and applied for a patent for the same invention in a foreign country, you may qualify for a special form of examination called 'modified examination'.

The foreign country must be either the USA, Canada, New Zealand or a country that is a signatory of the European Patent Convention such as the United Kingdom.

Benefits

The main consideration during modified examination is whether the text and drawings of your Australian specification are the same as the text and drawings of the specification of your foreign patent. This saves you duplicating some of the effort you have already put into your foreign patent.

The fee for modified examination is less than the fee for normal examination.

Conditions for filing

When filing a request for modified examination you must meet the following criteria:

  • your complete patent application in Australia must be for a standard patent
  • you must have been granted a patent for your invention in at least one of the countries listed above (if the patent has not yet been granted you have the opportunity to defer examination in Australia)
  • the foreign patent must be in English
  • the foreign patent must be for the same invention
  • if the Commissioner of Patents asks you to file a certified copy of your granted foreign patent, you must do so before your Australian patent application can be accepted (the Commissioner does not normally ask for certified copies).

If the text and drawings of your complete specification are not the same as your foreign patent, you must propose amendments to make them the same. It may be possible for you to omit one or more of the claims of the foreign specification from your Australian specification.

Requesting modified examination

You may request modified examination by completing the appropriate part of the examination request form including details of your patent granted overseas.

You may withdraw the request for modified examination at any time before acceptance and instead ask for normal examination. If you ask for normal examination after modified examination has begun, a fee is payable.

Deferment of examination

You can ask to defer examination if:

  • we have directed you to request examination
  • you would qualify for modified examination except the foreign patent has not yet been granted in one of the countries listed above
  • you expect the foreign patent to be granted soon.

You must make the request for deferment by completing the Request for Deferment of Examination of Patent Request and Complete Specification form and give the full details of the foreign application that is not yet a granted patent. You need to give details of only one pending foreign application.

If there is one foreign application on which a patent has not yet been granted, it does not matter whether a patent has been granted on another foreign application. For example, you may ask for deferment based on a pending United States application, even though a United Kingdom patent has already been granted.

Deferring examination will give you an extra period of nine months in which you can request examination. If the foreign patent is granted in that time you can ask for modified examination. If you fail to ask for examination within the extra period your application will lapse.

It is also very important to note that your application will lapse if no request is received within 5 years of the application's filing date, even if the nine month time period finishes later than this date.

Certified copy of the granted foreign patent

Applicants will only have to file a certified copy of the granted foreign patent when requested to do so by the Commissioner.

If you are asked to provide it, the certified copy must have been certified by the official chief or head of the patent office of the foreign country that granted the patent or otherwise verified to the reasonable satisfaction of the Commissioner. These other certified copies could be:

  • a true copy of the granted patent certified as such by an Australian patent attorney*
  • a true copy of the patent which has already been certified by the official chief or head of the patent office which is then certified as being a true copy by an Australian patent attorney*
  • a document that is stated or certified by an Australian patent attorney* to be a copy of an officially published version of the specification of the granted patent.

* Certification may also be done by a foreign equivalent to a patent attorney, a justice of the peace or a notary public instead of an Australian patent attorney as indicated above.

Last Updated: 25/10/2011