HIP TIPS 5 - Patent Examination timelines in Australia and New Zealand
Patent prosecution timelines in Australia and New Zealand are subject to significant variations between lodgement and grant. In some scenarios a faster prosecution cycle may be desirable, such as when an infringing party has been identified. Alternatively, the applicant may wish to delay the prosecution, for example in order to amend the claims based on examination developments in other jurisdictions, such as the United States or Europe.
The following brief summary outlines the tools available to patent applicants wishing to influence their prosecution timelines.
Australia
In Australia, if an application is permitted to run its natural course, the Patent Office will eventually issue a Direction to Request Examination, normally around 2 years from the filing date. Once the Direction issues, the applicant has 2 months to formally request examination and pay the official examination fees.
At present, the delay from requesting examination to receiving a first examination report is outlined in the table below, and dependent on the technology area:
Examination delay after requesting examination
| Biotechnology | 19 months |
| Chemical compounds | 16 months |
| Bio-therapeutics | 25 months |
| Pharmaceuticals | 17 months |
| Physics | 9 months |
| Electronics and communications | 8 months |
| Computing | 9 months |
| Data processing and measurements | 10 months |
| Mechanical engineering | 14 months |
| Construction and mining | 13 months |
| Medical devices | 11 months |
Noting the delays, particularly in the chemical and biotechnology disciplines, the examination may be advanced by the applicant as follows:
1) Request examination at lodgement
This does not alter the time periods outlined in the table above, but it does start that window more than 2 years earlier. Requesting examination at lodgement results in a considerable reduction of the prosecution timeline, and there are even cost savings, as there is reduced file handling from our side, as it obviates the need to data enter and report the Direction to Request Examination.
2) Request expedited examination
This can be done at lodgement or anytime thereafter. Expedited examination differs, in so far as it also causes the application to move up the queue, so the time periods outlined in the table above are significantly shortened, typically to less than 3 months. A request for expedited examination must be accompanied by a reason in support of the request. The permissible reasons are:
a) the invention relates to environmentally beneficial technology;
b) the applicant is a small to medium sized enterprise (SME); or
c) commercial reasons.
In practice, the Patent Office does not require formal proof to support the reason.
3) Expedited examination based on the Global Patent Prosecution Highway (GPPH)
The GPPH is available where an application has been examined and allowed in another jurisdiction from one of more than 20 countries, including, Canada, Chile, Israel, Japan, New Zealand, Singapore, South Korea, United Kingdom, United States of America. A similar agreement exists between Australia and Europe.
When the GPPH is invoked, the Australian claims must be substantially aligned with the allowed foreign claims. We typically receive the first examination report within 3 months of initiating the GPPH.
New Zealand
By comparison, the time period between requesting examination and receiving an examination report in New Zealand is more significant, as outlined below. In particular, the delays for biotechnology and chemistry related applications are considerable, with delays for biotechnology cases presently standing at over 3 years:
Examination delay after requesting examination
| Biotechnology | 38 months |
| Chemistry | 29 months |
| Electronics | 18 months |
| Information and computing | 18 months |
| Mechanical | 18 months |
The same routes to reduce examination timelines in New Zealand are also available, namely:
1) Request examination at lodgement; or
2) Request expedited examination
In New Zealand, an expedited examination request must be accompanied by evidence which is assessed to confirm if this meets a “good and substantial” requirement. This evidence must be in the form of a statutory declaration. We can work with you to prepare a suitable declaration, but at a high level the kinds of reasons that are permissible include:
3) Expedited examination based on the GPPH
New Zealand is also a member of the GPPH. All of the claims to be examined by IPONZ must be of identical or similar (including narrower) scope to claims accepted in another GPPH member state.
As outlined in our earlier article on divisional patent practices in Australia and New Zealand (divisional patent article) New Zealand has a 5-year deadline for filing divisional applications, calculated from the filing date of the original parent (or grandparent). This means that within 5 years of the first New Zealand standard patent application being filed, a decision needs to be made regarding whether any divisional applications are desired.
One way to mitigate the inflexibility regarding the 5-year deadline is to request examination of the parent application at lodgement, which normally results in the parent application being examined in advance of the 5-year deadline. This enables the applicant to file any divisional applications taking into consideration the New Zealand Examiner’s position on the parent claim set, and whether there are unity issues.
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