Expedited Examination of Patent Applications in Australia: Strategic Advantage

In the competitive field of intellectual property (IP), timing is as important as the innovation itself. The standard Australian patent examination process typically progresses in a queue, often leading to a delay between requesting examination of a patent application and receiving an examination report. For applicants with urgent commercial or legal needs, competitive pressures, or potential infringement concerns, this delay can be challenging. To address such circumstances, IP Australia offers a valuable mechanism for expedited examination. This mechanism allows for a faster path to a granted patent, providing a significant strategic advantage where time to protection is critical.

Examination Process in Australia

Before an application for a standard patent can be granted in Australia, the application must undergo a substantive examination to assess whether it meets the requirements of the Patents Act 1990 (Cth). This process involves a meticulous review by an Examiner from IP Australia to determine if the invention is novel, involves an inventive step, has utility, and constitutes a patentable subject matter.

The examination process formally begins with filing of a request for examination as outlined in Section 44 of the Act. While the Applicant can voluntarily request examination at any time within five years of the complete specification’s filing date, the Commissioner of Patents may also issue a direction to request examination. This direction may be issued under specific circumstances, such as when a third party requires the Commissioner to do so. Failure to respond to such a direction within two months will cause the application to lapse.

Under normal circumstances, applications enter an examination queue based on the date of filing of the request for examination. However, there are exceptions to this, most notably expedited examination, situations where pending actions (such as Section 223 actions) need to be resolved, or when it is more efficient for Examiners to group and examine similar cases. While the standard queue promotes procedural fairness, it does not account for an Applicant’s commercial urgency, highlighting the importance of expedited examination in such situations.

Expedited Examination

Expedited examination allows Applicants to significantly shorten the timeframe for receiving a first examination report and often, advancing more quickly towards grant of the patent application. By accelerating the process, it can significantly reduce the time to a granted patent, which is crucial for various strategic reasons. A granted patent is a prerequisite for initiating infringement proceedings, making expedited examination vital for the Applicants facing a potential or actual infringement of their invention. Furthermore, a granted patent can be a key asset when seeking investment, securing licensing agreements, or entering into commercialization partnerships. A quick grant provides a clear signal to potential investors and licensees, validating the invention and bolstering its commercial appeal.

IP Australia may grant a request for expedited examination when the Commissioner is “reasonably satisfied” that expedited examination in public interest or special circumstances exist. While the reasons are non-limiting, they typically include:

• The invention relates to environmentally beneficial (green) technology.
• The Applicant is a small or medium-sized enterprise (SME) and requires timely protection.
• There is commercial urgency, including potential or actual infringement of the invention.
• The Applicant qualifies under a Patent Prosecution Highway (PPH) program based on a positive examination outcome or allowable claims from an overseas patent office.

Upon grant of the request for expedited examination, the examination of an expedited matter is carried out with the same level of substantive rigor as a standard case, but with a strict timeline, the Examiner is expected to issue a report within approximately eight weeks of the expedited examination request.

Expedited Examination Through Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) offers a structured way to accelerate the patent examination process for Applicants who have already received a favorable examination outcome in a different jurisdiction. This program is built on the principle of leveraging positive examination outcomes from an overseas patent office to expedite the process for corresponding applications. If an Applicant has received a finding of allowability for at least one claim in a corresponding application examined by an Office of Earlier Examination (OEE), the Australian application may qualify for accelerated examination under the PPH. The PPH provides a significant advantage for clients with global portfolios, as it can drastically shorten the time to a granted patent in Australia, allowing for quicker commercialization and enforcement. IP Australia participates in two PPH programs: Global Patent Prosecution Highway (GPPH) and a bilateral PPH program with the European Patent Office (EPO).

Both programs allow the Applicants to fast-track examination of Australian patent applications, saving time and reducing redundancy of work across jurisdictions.

Global Patent Prosecution Highway (GPPH)

The GPPH is a multilateral agreement involving multiple patent offices worldwide. Under this program, if an Applicant receives a ruling from a participating patent office, known as an Office of Earlier Examination (OEE), that at least one claim in a patent application is allowable or patentable, the Applicant can request expedited examination of the corresponding claim in an Australian application. This applies to both national applications and PCT applications where the OEE acted as the International Searching Authority (ISA) or International Preliminary Examination Authority (IPEA). This collaborative approach reduces redundant work and provides a more efficient and cost-effective pathway to patent grant. EPO is not part of the GPPH, and its PPH program with Australia is handled separately.

Core Requirements for GPPH Acceleration

To successfully qualify under the GPPH, an Australian application must satisfy three essential requirements.

• The Australian application must be appropriately linked to the overseas or PCT application that was favorably examined by the OEE. This association can be established in several ways, including:
  • The Australian application claims priority from the overseas application.
  • Both applications are based on the same PCT application.
  • Both applications claim priority from a same priority document, regardless of where the priority document was filed (often referred to as the “Mottainai” principle, meaning “what a waste” in Japanese, to prevent wasted work).
  • The Australian application is the priority document for the overseas application.
  • The Australian application is a divisional of an application that meets any of the above criteria.
• All claims in the Australian application must sufficiently correspond to allowable claims from the OEE i.e., the Australian application claims must be of same, similar, or narrower scope than the allowable claims in the overseas application. A claim that introduces a new or different category of claims (e.g., a method claim when only a product claim was allowed) do not qualify. If required, the claims may be amended to ensure compliance.
• To proceed under the GPPH, a request for examination for the Australian application must have been filed (either previously or concurrently with the GPPH request) and no examination report is issued.

Required Documentation

To support a GPPH request, specific documents must be provided to IP Australia. The required documentation includes:

• A copy of office actions from the OEE (or ISA/IPEA) that clearly indicate allowability or patentability of claims following a substantive examination of novelty and inventive step.
• A copy of claims that were found to be allowable.
• An indication of the relationship between the Australian claims and the allowable claims of the OEE, typically provided in the form of a claim correspondence table.

Where possible, IP Australia may retrieve certain documents from the OEE’s Dossier Access System (DAS), reducing administrative steps. If GPPH requirements are not met, IP Australia will notify the Applicant to correct deficiencies or pursue standard expedited examination instead.

IP Australia-European Patent Office (EPO) PPH

While the EPO does not participate in the GPPH but operates a separate bilateral PPH program with IP Australia. The requirements broadly mirror those of the GPPH with the key distinction being the requirement for English translations of supporting documents. While machine translations are admissible, IP Australia may request a verified translation if accuracy of the translation is insufficient. This pathway is particularly beneficial for Applicants with strong European patent portfolios, providing a seamless and efficient pathway for securing corresponding Australian rights.

Why work with us?

At our firm, we understand that securing a patent is a critical step in protecting and commercializing your innovation. The decision to pursue expedited examination should be a strategic one, and we are here to help you make it. We offer comprehensive services that include strategic consultation, meticulous request preparation, claim analysis and amendments, and full liaison with IP Australia on your behalf. We are committed to helping you navigate the complexities of the Australian patent system and secure the valuable IP rights that your innovation deserves.

Our firm provides comprehensive support throughout this process, including:

• evaluating whether expedited examination is appropriate based on commercial urgency or strategic considerations;
• preparing persuasive submissions outlining the reasons for expedition;
• ensuring claim sets satisfy PPH correspondence requirements;
• managing translation requirements for EPO-based requests;
• lodging all required forms and documentation with IP Australia;
• responding to examiner queries and managing all prosecution steps following expedition;
• coordinating national-phase entry and international filing strategies for applicants with global portfolios.

To discuss how expedited examination can advance your IP strategy, contact our firm today for a free consultation.