Request for examination
Requesting examination for standard patent applications
After submitting the standard patent application you must request examination within 5 years of the filing date. Typically, after 4 years from filing your application we will direct you to request examination if you have not done so already. If a request for examination has not already been received, you will receive a direction to request examination. You must request examination within 2 months of the date of this direction or your application will lapse.
Once examination is requested you can normally expect a reply within about 12 months, depending on our workload.
After examination,either an adverse report or a notice of acceptance is mailed. If it is an adverse report, you will have the opportunity to make changes to your application to overcome the objections in the report. Once the objections are overcome, your application will be accepted.
In response to your changes subsequent adverse reports may be issued until all objections have been overcome. Once the all objections are overcome, your application will be accepted.
If no response is filed within 21 months from the date of the first adverse report, your complete application will lapse.
Similarly, if you have not successfully addressed all the issues in the adverse reports within 21 months from the date of the first adverse report, your complete application will lapse.
Important: If you request examination on or after 15 April 2013, you will only have 12 months from the date of the first adverse report to overcome the objections or your application will lapse.
Examination and certification of innovation patents
Examination and certification of patents is undertaken by us to ensure your patent meets the requirements of the Patents Act 1990.
To have legally enforceable patent rights, you must request that your innovation patent be examined, and pay the required fee. Alternatively, your competitors can also request examination of your innovation patent (e.g. if they own a patent that might be infringed by your invention). If this is the case, they pay half of the examination fee and you pay the remainder. In either case, if you do not pay your part of the examination fee, then your innovation patent will cease. In addition, the Commissioner may instigate examination your innovation patents.
During examination you will receive one of two possible replies:
- a notice that your patent has been successfully certified
- an adverse report explaining why your innovation patent does not meet the requirements of the Patents Act 1990.
If you receive an adverse report you will have the opportunity to make changes to your patent to overcome the objections in the report. Once the objections are overcome, your innovation patent will be certified.
If no response is filed within 6 months from the date of the first adverse report, your complete application will lapse.
Please note that, if the examination request has been made by a person other than the patentee, that person will receive a copy of each adverse report or notice.
Once your innovation patent is examined and certified you can take legal action on any infringements.
Last Updated: 03/4/2014