Interpretation of Australian Standard Patents and Their Accelerated Examination

Australia is the most developed economy in the southern hemisphere, the 12th largest economy in the world, and the 13th largest GDP in the world. It is also a member of the G20. In addition to valuing economic development, Australia also attaches great importance to the protection of intellectual property rights. Australia has a well-established intellectual property legal system and is also one of the important international rule makers and promoters of intellectual property. We have signed bilateral and multilateral agreements on intellectual property with many countries and regions around the world.

Compared with many countries, Australian patents have fast approval speed, high examination quality, and strong protection, making them the best choice for many companies to layout their overseas intellectual property. Today, we will take you to learn about Australia's standard patent system and its accelerated examination.

1、 Application channels

1) Paris Convention

2) PCT entering Australia

3) Submit directly to the Australian Intellectual Property Office (IPA)

2、 Submit application

The application documents consist of a specification, claims, drawings, abstract, abstract drawings, priority information (via the Paris Convention), and a translator's statement (via the PCT pathway, the WIPO public text is not in English). To submit an application in IPA, English is required and the English translation cannot be added later. After submitting the application, the IPA examiner will conduct a formal examination and publication of the application. The earliest priority date or 18 months from the filing date of the Paris Convention and direct application will be published, but the PCT will not be re published after entering the Australian national phase.

3、 Substantive examination

The applicant must submit a request for substantive examination within 5 years from the date of application, otherwise the application will be deemed automatically withdrawn. After the applicant submits a request for substantive examination, they usually receive a "Notice of Substantive Examination Opinion" issued by IPA within 1-1.5 years. What is particularly special is that the applicant must overcome all application defects within 12 months from the date of issuance of the first Office Action (OA1) by the examiner, regardless of the number of examination opinions experienced during this period. If the applicant is unable to overcome the issue within the 12-month response period, they may resubmit the application in the form of a separate case. This deadline cannot be extended.

4、 Accelerated review

1. The applicant needs to explain the reasons for requesting accelerated examination, which generally include:

·The applicant belongs to a small and medium-sized enterprise with less than 200 employees;

·The invention application belongs to the field of green environmental protection technology;

·Commercialization decisions or investment needs;

·Technical licensing or sales requirements;

·The demand for rights protection (i.e. the existence of infringement issues).

Australian authorities generally do not require evidence to support the reasons for the accelerated review request.

2. Accelerated review effect:

In order to achieve the effect of accelerating the review process (actually speeding up the issuance of OA1), applicants can submit an accelerated review request at the same time as submitting their application. IPA will issue OA1 approximately 3 months after receiving the request for accelerated review. Therefore, submitting an accelerated review request can save at least 9 months of time. Afterwards, regardless of whether the application involves accelerated examination or not, the deadline for the applicant's response after receiving OA1 is the same as the response deadline for applications under the regular examination procedure, which is 12 months. Therefore, the applicant can achieve the effect of accelerating the subsequent review by quickly responding to the OA, and generally has a chance to obtain authorization within about a year.

5、 Authorization

Unlike China's invention system, there is a 3-month objection period after an Australian invention application is granted. During this period, if no objection procedure occurs, the applicant can smoothly enter the evidence collection stage after paying the authorization fee within the period. In the case of non accelerated examination, the time from application to grant for Australian standard patents is approximately 2-3 years.

6、 Protection period

The protection period of Australian standard patents is 20 years from the date of application, and annual fees are required to be paid from the 5th year after the application date.