Acceptance of a Patent in Australia: Implications and critical next steps

The acceptance of a patent application in Australia is crucial for inventors and businesses seeking to protect and commercialize their intellectual property. While the acceptance confirms that IP Australia considers the application to meet the statutory requirements for patentability, it is not an end of the patent journey. Instead, the journey from filing a patent application to its grant involves several key stages, each with its own set of strategic, procedural and legal requirements and considerations.

Understanding what patent acceptance means and what must follow, is essential to ensuring that valuable patent rights are not compromised.

Stages through Patent Acceptance

The path to patent acceptance begins with a substantive examination by IP Australia, which occurs after a request for examination has been filed. During examination, a patent examiner assesses the application against the requirements of the Patents Act 1990 (Cth), including whether the invention is novel and involves an inventive step; has a practical application (is useful); constitutes patentable subject matter (a “manner of manufacture”); and is described and claimed with sufficient clarity and completeness.

Examination Reports and the Acceptance Deadline

Typically, examination results in the issuance of one or more examination reports setting out objections that must be overcome before acceptance can be granted. These objections may relate to prior art, clarity, support, sufficiency, or entitlement. The examination report needs to be responded with detailed legal and technical arguments and, where necessary, strategic amendments to the patent specification and claims. The primary goal is to overcome every objection raised.

Once the examination report is issued, a critical statutory clock begins to run. The application must be placed in a condition for acceptance within 12 months from the date of the first examination report. This is a non-extendable deadline under most circumstances. However, limited extensions may be available in defined circumstances. Failure to overcome all outstanding objections within this period will result in automatic lapsing of the application, with loss of all associated rights.

Acceptance is achieved only when the examiner is satisfied that all objections have been addressed; and any required amendments comply with statutory constraints.

Notice and Advertisement of Acceptance

Once the application is placed in order for acceptance by successfully traversing the objections raised in the examination report and meeting all legal requirements as per the satisfaction of the examiner, IP Australia issues a formal “Notice of Acceptance.” This is then advertised in the Australian Official Journal of Patents, which serves as public notification of the intended grant.

Advertisement of acceptance is not merely administrative. It triggers the commencement of the opposition period, during which the application remains vulnerable to third-party challenge.

The Opposition Period

The advertisement of acceptance opens a three-month window during which any third party can formally oppose the grant of the patent. This is a contentious legal proceeding that allows competitors or other interested parties to challenge the validity of a pending patent before it is officially granted. The opponent does not need to demonstrate commercial interest; patent validity is treated as a matter of public interest.

Nature of Opposition Proceedings

Opposition proceedings are formal, adversarial, and evidence-driven. An opposition can be filed on several grounds, the most common being that the invention is not new (lacks novelty) or is obvious (lacks an inventive step). Other grounds include the applicant not being legally entitled to the invention or non-compliance of patent specification with Section 40 of the Patents Act 1990 (Cth) (clarity, support or sufficiency of disclosure).

When an opposition is filed against an application, a formal legal process is initiated. The process begins with the opponent filing a “Notice of Opposition”, followed by “Statement of Grounds and Particulars,” filed within three months. The Statement defines the scope of the opposition and must set out the factual and legal basis of each ground.

This is followed by a structured evidentiary exchange: Opponent’s Evidence in Support; Applicant’s Evidence in Answer; and Opponent’s Evidence in Reply. In this evidentiary exchange, both parties file evidence, typically in the form of statutory declarations from technical experts, to support their claims.

Once the evidence stages are complete, the matter is typically set down for a hearing before a Delegate of the Commissioner of Patents, who acts as a tribunal. After considering all the evidence and arguments, the Delegate will issue a formal decision. The decision may be that the opposition is dismissed and the application is allowed to proceed to grant; that the opposition is successful and the application is refused; or, allow the application to proceed subject to acceptable amendments to overcome the grounds of opposition.

Postponement of Acceptance

In certain situations, it may be strategically beneficial to delay the acceptance of the patent application, even after it has been deemed allowable by the examiner. This procedure is known as “postponement of acceptance.” Australian patent practice permits an applicant to request postponement of acceptance until a specific date, up to the final deadline for placing the application in order for acceptance.

Postponement can be valuable where:

• Claim scope requires further strategic consideration;
• Corresponding foreign applications are still pending;
• There is a desire to keep the application pending to allow divisional filings.

A divisional application may only be filed while the parent application remains pending. Postponement therefore plays an important role in portfolio strategy. Any request for postponement must be withdrawn before acceptance can ultimately occur.

Extensions of the Acceptance Period

While the 12-month acceptance period is a strict deadline, limited extensions of time may be obtained under the Patents Act 1990 (Cth). These extensions are discretionary and require a formal request supported by a detailed declaration explaining why the deadline could not be met.

The primary grounds for seeking an extension of time are if the failure to gain acceptance was due to an error or omission by the applicant or their agent, or due to circumstances beyond a person’s control. For an error or omission, it must be demonstrated that there was a failure to perform an action that was intended to be done. For circumstances beyond control, it must be shown that an external event, such as a natural disaster or a postal strike, directly prevented the necessary actions from being taken. A further ground exists where it can be shown that, despite taking due care, the applicant was unable to meet the deadline. Obtaining an extension is a complex process requiring careful preparation of evidence. Extensions are not granted lightly. Applicants must demonstrate diligence, intention to comply, and prompt action once the issue is identified. Unsupported delay or tactical inaction will not suffice.

Revocation and Refusal of Acceptance

While highly uncommon, it is possible for IP Australia to revoke an acceptance that has already been issued. This may occur if the acceptance was issued ultra vires, meaning beyond the legal power of the Commissioner. For example, if an application was accepted while a postponement of acceptance was still in effect, or if it was accepted after the application had already legally lapsed, the acceptance would be void.

Furthermore, there are very specific and rare circumstances where the Commissioner of Patents is obligated to refuse an application, even if it meets all other patentability requirements. An application must be refused if the invention is one whose use would be contrary to law. This does not mean an invention that could be used illegally, but rather one that has no lawful use whatsoever. Additionally, patents cannot be granted for subject matter related to human beings or biological processes for their generation. These provisions act as a safeguard against the patenting of subject matter deemed ethically unacceptable.

Maintaining Patent After Grant

Once the application has been accepted and has successfully navigated the three-month opposition period without challenge (or with any opposition successfully overcome), the patent proceeds to grant upon payment of the prescribed fees. The grant of a patent bestows upon the Patentee an invaluable commercial asset: the exclusive right to commercially exploit the invention in Australia for the life of the patent, typically 20 years for a standard patent.

However, patent rights are conditional on ongoing compliance. Renewal (annuity) fees must be paid to keep the patent in force. For a standard patent, these fees are payable annually from the fourth anniversary of the patent’s filing date. The fees increase over the lifetime of the patent, reflecting its enduring commercial value. IP Australia sends reminders, but the ultimate responsibility for payment lies with the patent owner.

If a renewal fee is not paid by the due date, there is a six-month grace period during which the payment can be made, though it will incur monthly late fees. Failure to pay within the grace period results in lapsing of the patent, with loss of exclusive rights.

Patent owners must also ensure that register details remain accurate, including ownership, address for service, and security interests. Errors on the register can create enforcement and title risks.

How can we help?

The acceptance of a patent application in Australia is a significant achievement, but it is not the end of the journey. The post-acceptance period involves several critical steps, including the opposition period and the payment of grant and renewal fees.

A disciplined approach to acceptance and post-grant obligations is essential to converting patentability into durable commercial rights.

Our firm is committed to guiding you through every stage of the patenting process, from initial filing to post-grant maintenance. We will act as your trusted advisors, ensuring that your intellectual property is protected and that you are well-positioned to capitalize on your innovation.

Contact us today for a free consultation.