Examination and publication of an Australian patent application

Publication of an Australian patent application

Australian patent applications and PCT patent applications are published at 18 months from their earliest priority date. This is typically the filing date of the first provisional patent application filed in the family. Standard Australian patent applications are then published again when they are accepted. This is done because the claims typically change during examination and it is necessary to publish the accepted claims.

Provisional patent applications are not published if no priority is claimed from them.

Publication of patents is significant because upon publication the information about your invention included in your patent specification is no longer confidential. It becomes part of the public knowledge and can be accessed by anyone online.

Another important aspect is that use of your invention by a third party after publication can lead to infringement if the claims of the patent are allowed or certified.

Examination of an Australian patent application

Examination of Australian patent applications typically takes place 18-36 months after the patent application has been filed and is a detailed review by an Examiner to determine whether the patent claims included in a specification meet the requirements of patentability and can thus be granted. Only granted patent claims are legally enforceable. Provisional patent applications are not examined.

Examination of a standard patent is required within 5 years of filing the application, although as mentioned above, the patent office will typically direct a patent applicant to request examination prior to this. The primary considerations during examination of a standard patent are whether the claims are patentable subject matter and are new and involve an inventive step in respect of the prior art.

If during an examination, a standard patent does not meet the requirements of the Patents Act 1990, then the Examiner will raise one or more objections. The applicant will have the opportunity to overcome these objections by making allowable amendments to the specification and claims but if the objections cannot be overcome then the patent application will lapse.