The absolute deadline for filing a Request for Examination on an Australian patent application is five years from the filing date of the application. Typically, IP Australia will issue a Direction to Request Examination well before the end of the five year period which then sets an earlier deadline for requesting examination. The issuing of Directions to request examination is IP Australia’s way of controlling the workload for their Examination groups.
Prior to the introduction of the “Raising the Bar” changes to Australian patent law in April 2013, the earlier deadline was six months from the date of the Direction to Request Examination. Under the new post-“Raising the Bar” regulations this deadline is now set at only two months from the date of the Direction to Request Examination.
The introduction of the “Raising the Bar” changes to Australian Patent law prompted many patent applicants to file voluntary requests of examination before a Direction was issued. The result of this was the creation of a significant examination backlog at IP Australia. As a result, IP Australia ceased issuing Directions to Request Examination except for cases close to their absolute five year deadline.
We understand that the backlog of examination at IP Australia is progressively being reduced, and for some Examination groups, has been eliminated altogether.
Consequently, we can expect that from April 2014, Directions to Request Examination will begin to issue on a regular basis and the number of Directions which issue will increase in number over time.
Given the very short two month deadline which now applies to requesting examination following the issuance of a direction, we would appreciate early instructions for requesting examination. Please send through instructions to email@example.com.
Failure to file a Request for Examination within the two month deadline set by the Direction will result in the lapsing of the patent application.
Because of the short deadline, and the consequences of failing to file a Request for Examination, FB Rice’s policy will be to automatically request examination about one week before the deadline in the absence of contrary instructions.