IP Australia curbs prosecution delay tactics

Effective October 1 2010, the Australian Patent Office (APO) has implemented case management measures to expedite the resolution of divisional patent applications. The measures are directed at applications which, at face value, appear to be the re-filing of a parent (or grandparent) patent application with claims for which a ground of objection has previously been raised but not addressed in the context of the earlier application.

A first examination report issued by the APO is required to raise all possible grounds of objection that would prevent the application from being accepted. The issuance date of the first examination report also sets a 21-month deadline by which the patent application must be accepted. If an objection remains outstanding by this deadline, the application will lapse.

The underlying legislative intent of this 21-month acceptance deadline is to give applicants a generous timeframe in which to address objections raised during examination, in particular where the novelty and/or inventive step is at issue. Equally relevant is the intention to provide third parties some degree of certainty about a timeframe within which the scope of a patent will be settled.

In the past, applicants have legitimately used patent provisions to bypass the 21-month acceptance deadline by filing a divisional patent application with claims identical to those of the lapsed parent patent application. This strategy enables applicants to keep their competitors in the dark about the timing and final scope of the patent claims. The additional prosecution time bought by this mechanism amounts to between 30 and 48 months. This practice of buying time by filing divisional applications is seen by some stakeholders as an abuse of process.

The new case management process relies on existing provisions in the Patents Act 1990 and its associated regulations. The commissioner of patents will issue a direction (for the applicant) to request examination soon after a divisional application is filed. The deadline for requesting examination remains six months from the direction date. Currently it appears that the APO is issuing directions to request examination within two to four months of the filing date of a divisional application.

Where grounds for objection exist against the divisional application, a first adverse examination report will be issued. The timing of this first report on genuine divisional applications (eg, filed in respect of second and further inventions) will depend on the workload within the relevant examination section.

Where the divisional application is identified as being a re-filed case (ie, where it contains claims previously objected to on a parent application, or where a ground of objection is substantially identical to that previously raised in relation to the parent application and outstanding in respect of this) the first report will give a shortened two-month period to overcome the objection(s). The commissioner of patents can consider directing amendments of the application under Section 107 of the Patents Act, or proceed to refuse the application under Section 49(2). Under Section 107 the commissioner can force the amendment of the application without input from the applicant. However, it is much more likely that the commissioner will refuse to proceed with the application.

Refusal will not occur without the applicant having the opportunity to be heard. During a hearing, the hearing officer delegated by the commissioner will consider all grounds of objection, whether raised previously or not, and where a ground of objection is capable of rectification, a reasonable period (likely to be between one and two months) will be afforded to the applicant to rectify the deficiencies. Otherwise, the application will be refused. The applicant's only option then will be to appeal to the Federal Court of Australia.

The adoption of this new process will demand consideration of claim-drafting strategy immediately before or just after the filing of a subsequent divisional application so as to avoid being caught in the shortened prosecution process.