What to Expect During the Australian Patent Examination Process
Alright, so you’ve got an invention.
You’ve jumped through the hoops and submitted a patent application in Australia, and now you’re staring at the “patent examination process” wondering what happens next?
In this article we will walk through exactly what to expect.
Why the Patent Examination Process Matters
Here’s the deal: you can’t just file a patent application and get a patent automatically.
IP Australia isn’t going to rubber-stamp just anything. They want to make sure what you’re claiming as “new” really is new—and worthy of protection.
The Real Reason IP Australia Is So Tough
People often ask, “Why does IP Australia care so much about this patent examination process?”
It’s because they’re the gatekeepers of which innovations get to enjoy a monopoly in Australia that can last up to 20 years. This is a huge commercial advantage that shouldn’t be handed out lightly. (Imagine if patents were granted willy-nilly for obvious or existing technologies!)
Understanding IP Australia’s patent examination process will help you work with them, not against them.
Step 1: From Filing to Requesting Examination
You’ve filed your application—that’s step one in the patent application process.
But here’s a little reality check: your application simply sits idly until you request patent examination.
In Australia, unlike many other countries, the patent examination process doesn’t simply start on its own. You’ve got up to five years from the filing date to request patent examination.
More commonly, IP Australia will issue a direction for you to request examination of your patent application before the five year deadline (and if you don’t, your patent application will lapse).
At the time of writing, after requesting examination it can take IP Australia as “quick” as nine months to examine physics and ICT-related inventions, and as long as 22 months to examine bio-therapeutic-related inventions.
But if you need results fast, there are also expedited examination options to consider.
Optional Step: Expedited examination
Sometimes, you can’t afford to sit back and wait for your patent application to inch through the usual process.
Maybe you’re getting ready to launch, or you know a competitor’s hot on your heels.
Whatever the case, IP Australia’s got some ways to fast-track your patent application—and if time’s of the essence, you need to know about these.
1. Ask IP Australia for Expedited Examination
First up, you can directly ask IP Australia to speed things up.
All it takes is a formal request and a compelling reason (think product launch or investor deadlines).
If your case is solid, IP Australia can get your application in front of an examiner within weeks, not months.
Once you’re on the fast track, you’ll need to stay on top of deadlines and respond quickly to any feedback. This is not the time to let things slide.
2. Use the Patent Prosecution Highway (PPH)
If you’ve already filed for a patent in another country like the US or Japan and received the green light, you can use that momentum in Australia.
This is what’s called the Patent Prosecution Highway (PPH).
Basically, if certain patent offices consider the invention defined by your patent claims to be patentable, Australia might expedite the examination of your application and come to the same conclusion.
3. Fast Track for Green Technology
Let’s be real—climate change is one of the biggest challenges out there. Australia’s not waiting around on this one.
If you’ve got a green innovation that could help tackle the environmental crisis, IP Australia’s got a special fast-track option just for you.
This process is built to get environmentally-friendly tech out of the application backlog and into the market, fast.
So, if your invention could make a difference in the fight against climate change, this is the route you want to take. Make it count.
4. SME Fast Track: Get a Jump on Big Players
Australia knows that small and medium enterprises (SMEs) are the backbone of the Australian economy.
If you’re an Australian SME, there’s an express lane just for you.
The SME Fast Track is designed to help local businesses secure patent protection without getting bogged down.
So, if you’re gearing up to bring something big to market but need that patent edge sooner rather than later, use this fast track to get ahead of the pack.
Step 2: The Examination Process—What They’re Looking For
Now we’re getting into the real heart of it: substantive examination.
This is where IP Australia takes your application apart piece by piece to see if it meets their standards.
It’s a bit like a job interview, but for your invention.
Novelty and Inventive Step—The “Are You Original?” Test
The first thing IP Australia wants to know is: is your invention genuinely novel?
They’re going to stack your application up against anything and everything that was already in the public domain before the priority date of your invention (this public information is referred to as “prior art”).
Then, there’s the “inventive step” requirement. Your invention can’t just be a minor tweak on what already exists. It’s got to be a significant improvement.
Step 3: Handling Examination Reports
Here’s where the rubber meets the road: the examination report, also known as an “office action.” If IP Australia finds an issue during the patent examination process, they’ll send you a report outlining their objections. And trust me, objections are common. Even some of the best applications get hit with them.
Common Objections (and How to Handle Them)
Objections typically focus on issues like novelty, inventive step, and clarity.
Think of it this way: IP Australia needs to make sure that your invention is new, inventive, and well-defined. This rigorous process ensures clarity over what you have patent protection for (and, correspondingly, what competitors are free to do).
Receiving examination reports is par for the course. Objections aren’t a “no”; they’re an invitation to improve your application.
This is where working with your patent attorney is invaluable—we know how to respond, amend, and argue to emerge successfully from the patent examination process.
The most common objections can be overcome by:
Amending the Claims: You can adjust the wording of the claims to better distinguish your invention from prior art; and/or
Submitting Patentability Arguments: Patent examiners are often quick to raise initial objections and might even mimic the objections raised in other countries. However, this does not mean they are correct and a strong, well-reasoned argument can convince them to withdraw their objections.
Step 4: Acceptance or Further Reports
Now, if your responses satisfy IP Australia, you’ll get a notice of acceptance.
However, be prepared, because it’s not uncommon for a patent examiner to issue subsequent examination reports, especially if your response gives rise to new issues.
Step 5: Acceptance, Publication, and Opposition Period
When acceptance of your application is finally published in the Australian Official Journal of Patents, this commences a 3-month period during which others can oppose your patent.
Assuming no one opposes the grant of your patent application (it is exceedingly rare, after all), you’re heading for a granted patent!
Wrapping Up: The Value of Patience and Professional Support
The Australian patent examination process isn’t a sprint—it’s a marathon.
This process can feel like an uphill climb, but getting a strong patent is worth every ounce of effort.
Working with a patent attorney isn’t just about filling in forms; it’s about having a seasoned ally who knows when to push, when to pivot, and when to double down.
So, get clear on your goals, prepare to put in the work, and know that a great patent isn’t just a piece of paper—it’s your stake in the market.
Closing Thoughts: Remember, every great invention goes through scrutiny. IP Australia is thorough for a reason. The patent examination process, while challenging, is there to protect you as much as anyone else. Take it seriously, be persistent, and you’ll have the best chance of success.
