Griffith Hack Clean & Sustainable Technologies

The Australian Patent Office has stated that it is willing to expedite applications in the field of “green technology”. This is likely to be interpreted broadly by the Australian Patent Office, and would most likely include any technology that arguably mitigates an environmental problem.

Expedited exam has been available for many years in Australia, and not just for green technologies. Officially, a reason must be given as to why expedited exam is requested but in practice the Australian Patent Office does not usually insist on this. I recommend not giving a reason at first instance to keep the public record clean. The reason “The application relates to a green technology” should be sufficient for the Australian Patent Office. Another popular reason is that a third unspecified party is or is expected to infringe the claims of the application and so it is in the interest of all parties to provide clarity. It is important not to name the third party as this may give the third party grounds to sue for unjustified threats, drawing the applicant into litigation.

An Australian patent application is examined only after a Request for Examination is filed and so this is the first step that should be taken to expedite examination of any application. Currently, there is a delay of between 12 and 24 months, depending on the base technology, between the request for examination being made and the issuance of a first examination report. A request for expedited examination of the application can be filed at any time after filing the application. There is no fee. The examiner may check that the reason given is consistent with the application and thus it is preferable not to give a reason in the first instance.

A first examination report will issue in around 4 to 8 weeks after the request for expedited examination is made. It is then up to the applicant to respond accordingly. Prosecution of the application does not necessary proceed at a faster than usual rate after the issuance of the first report, although the Australian Patent Office may be receptive to requests for a quick turn around.

It may be beneficial to apply for expedited exam if the applicant is seeking to enforce patent rights or if an investor requires a granted patent before they invest. Not applying for expedited exam provides the applicant with time to develop and plan the commercialization and marketing of their invention, and determine whether their invention is commercially viable before making the financial commitment that comes with patent prosecution. Australian patent examiners often look at the prosecution history of the corresponding US and European cases and thus if the application is accepted before exam reports issue against these applications then it is likely that broader claims will be realized.

Justin Blows