IP Australia consults on streamlining patent prosecutions

The Australian federal government has held consultations with stakeholders in the patent system with a view to reducing the costs to and administrative burdens on patent applicants. In particular, IP Australia (the Australian Patent Office) wants to abolish the requirement for applicants to provide details of prior art cited by patent offices in other countries. The consultation period for this issue is very short – the deadline for comments ended on June 13 - indicating that IP Australia is keen to implement this change immediately.

Since 2002 Australian patent applicants have had to provide IP Australia with prior art information during the examination of their applications. This has been a significant administrative burden to applicants and has increased the cost of pursuing an Australian patent. In addition, there are significant financial penalties if applicants fail to meet the tight deadlines within which this information must be provided.

The proposed change to the administrative requirements arises from IP Australia’s newly adopted philosophy of ‘one search, one examination’. IP Australia now reviews the websites of the US Patent and Trademark Office and the European Patent Office in relation to equivalent applications when examining an Australian application. It is therefore able to access information about relevant prior art that is provided by applicants in other jurisdictions or is cited by other patent offices. This means that the information currently being provided by applicants to IP Australia under the existing prior art disclosure requirements is, at least to some extent, being duplicated.

Further, all communications relating to patent examinations before the US Patent and Trademark Office and the European Patent Office are publicly available on the Internet. IP Australia has increasingly utilised these in its own examination procedures, often cross-referencing or reciting verbatim the content of examination reports in its own official actions. This enables high throughput at IP Australia and, the government asserts, a high quality and consistent level of examination compared to that which a patent applicant would experience in another jurisdiction.

IP Australia’s aim to achieve an ideal patent system would negate the need for multiple examinations of a patent application and would significantly simplify and streamline the achievement of patent protection around the world.

In addition, IP Australia also proposes extending the time period during which third parties may anonymously bring relevant prior art in respect of a patent application to its attention. These provisions are not commonly used in Australia due to the existence of pre-grant opposition procedures and the proposed changes are unlikely to be significant, although they do reflect the government’s intentions.

IP Australia participates widely in international discussions on patent harmonisation and Australians hold senior positions in IP organisations around the world. While it seems likely that it will be many years before there is true harmonisation between the substantive aspects of patent law in the major IP jurisdictions, there is a significant push at senior bureaucratic levels to achieve procedural harmony.

IP Australia is one of the more vocal participants in these discussions and ultimately this is likely to lead to more streamlining of the patent examination process for Australian patent applicants. This can only be good for prospective patentees, as it reduces the administrative burden and the cost of seeking patent protection in Australia.