Foreign agents: simple steps to reduce patent costs in Australia

Date: 2012-11-14
Author: Daneta Crump

There are a few simple steps that a foreign agent can take to minimise patent costs in Australia, from filing through to grant.

Voluntarily request examination

Examination of an Australian patent application must be requested by 5 years from the filing date. However, if you have not requested voluntary examination by approximately 45-55 months (current timing) from the priority date then the Australian Patent Office will issue a Direction to Request Examination. You must then request examination within 6 months1 from the Direction.

By voluntarily requesting examination prior to the issuance of the Direction, you will avoid any handling costs associated with the Direction. To do this, you may wish to routinely instruct examination be requested at filing, or set up a reminder around 42 months from the priority date to instruct examination be requested.

Voluntary amendments

Many foreign agents request that voluntary amendments be lodged when filing a convention application or entering national phase. A voluntary amendment filed before Examination is officially requested incurs an official fee of A$250. There is a defence to damages for infringement occurring prior to grant, if the defendant can prove that at the time the act was done the pending claims were not valid. Therefore, for substantive claim amendments, there is a desire for amendments to be on the public record as early as possible. However, for trivial claim amendments and amendments to the specification, waiting to file voluntary amendments when Examination is requested will avoid the official fee.

Provide Word documents

By providing a Word copy of the patent specification and claims, you can minimise the costs associated with amendments, as re-typing of pages of text are avoided.

Conforming to European or US claims

Some of you may be aware of Australia’s ‘modified’ examination option, where the claims of the Australian application are brought into conformity with the granted claims of a corresponding foreign patent. Under this process, lack of unity of invention cannot be raised as an objection; however the ability to amend the claims in response to an objection raised by the Patent Office is limited. Under the Intellectual Property laws Amendment (Raising the Bar) Act 2012 from 15 April 2013 such official ‘modified’ examination will no longer be available.

If the applicant is satisfied with the scope of the independent claims allowed in another country, particularly the US or Europe, and you do not believe that there is an opportunity to obtain broader protection in Australia, then it is worthwhile considering filing a voluntary amendment. The Australian claims can be brought into conformity with those allowed in the US and/or Europe as a voluntary amendment when requesting examination. In such circumstances we would advise the Australian patent office that the amendments align the claims with those granted in a foreign country, which may influence the examiner and result in a clear examiner’s report. Please note that unity of invention will still need to be considered under Australian practice.

Reduce claim numbers

When instructing a response to an examiner’s report, consider the claim numbers and whether they can be reduced. Excess claim fees are payable at acceptance for claim numbers over 20. Multiple dependencies are allowed in Australia, and therefore there may be opportunity to consolidate repetitive dependent claims.

Provide prompt instructions

If the foreign situation is amenable, it is advisable to provide your response instructions well ahead of 12 months2 from the issuance of the Examiner’s report. Late response fees are payable for any response filed 12 months from the date of the first Examiner’s report. If any further Examiner’s report issue, the late response fees are payable relative to the first report date for a further 9 month period.

Automatic renewal system

We provide an automatic renewal system, where we send you one reminder before the initial deadline to renew an application or patent (in the event that the applicant wishes to abandon), and then we automatically pay the renewal fee before late fees are payable. This insures that late fees are not incurred.

If you wish to discuss any of the above options with one of our attorneys, our contact details can be found on the Our People section or Contact Us section of this site.

  1. Under the Intellectual Property Legislation Amendment Regulations 2012, there is a proposal that this deadline will be reduced to 2 months from the Direction issue date. This reduced timeframe will relate to Directions issued after 15 April 2013.
  2. Under the Intellectual Property Legislation Amendment Regulations 2012, there is a proposal that this deadline will be reduced to a total of 12 months from the examiner’s report. Late response fees would therefore no longer be payable. If allowance is not obtained by the reduced 12 month deadline, the only option to continue appears to be the filing of a divisional application.