Australia Patent

Australian patent examination timelines depend on whether examination is expedited and on the technology area. Standard examination: after an examination request is filed, IP Australia typically issues a First Examination Report (FER) within 12–18 months from the examination request date. The total time from filing to grant for a standard patent without opposition is approximately 3–5 years. Expedited examination: IP Australia offers expedited examination for a fee of AU$2,000 — this accelerates the FER issuance to approximately 3–6 months. PPH (Patent Prosecution Highway) examination: if the USPTO or another PPH partner has allowed corresponding claims, Australian examination can be accelerated using those allowed claims as the basis. PPH applications typically receive a FER within 3–6 months. IP Australia accelerated examination for urgent commercial reasons: available on request with written justification (e.g., actual commercial working of the invention, impending litigation), no additional fee. The 5-year deadline for examination request is absolute — applications that do not receive an examination request within 5 years of filing automatically lapse.

The innovation patent was a second-tier Australian patent designed to protect minor innovations that would not reach the inventive step required for a standard patent. Key characteristics: 8-year maximum term; 'innovative step' standard (defined as any new and innovative step, which was a much lower threshold than inventive step — essentially any contribution not previously known); self-certification at filing (no upfront examination); substantive examination only triggered when the patent owner sought to certify the patent for enforcement purposes. The innovation patent was abolished by the IP Laws Amendment (Productivity Commission Response Part 2) Act 2020, which came into force on August 26, 2021. No new innovation patent applications are accepted after August 26, 2021. This followed a recommendation by the Productivity Commission's 2016 IP review, which found that the innovation patent system primarily benefited existing patent holders and litigation defendants rather than stimulating actual innovation by small businesses. Impact on practitioners: existing innovation patents remain valid for their stated term. Practitioners are now focusing exclusively on standard patents for Australian protection. The loss of the innovation patent system means Australian law no longer offers a quick-registration, low-threshold option for protecting minor improvements.

Software and computer-implemented inventions are potentially patentable in Australia, but the legal position is nuanced. The 'manner of manufacture' requirement under s. 18(1)(a) of the Patents Act 1990 is the key eligibility hurdle, and the High Court has not definitively ruled on software in general. The leading case is Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, where the Full Federal Court found that a purely mathematical method implemented on a computer was not patent-eligible — if the claimed invention is a scheme, plan, or abstract idea, implementation on a computer does not automatically make it eligible. However, computer-implemented inventions with a 'concrete, tangible, physical, or observable effect' in the computer itself, or which solve a technical problem in a technical way, are generally eligible. IP Australia's 2019 Examination Guidelines for computer-implemented inventions indicate that claims may be eligible if they produce a 'useful, concrete, and tangible result.' Practically: claims directed to improved computer functioning, new computer architectures, or specific technical applications of computing (robotics, signal processing, database management) are well-accepted. Pure business method claims or pure mathematical algorithm claims, even when claimed as implemented on a computer, face Alice/Mayo-equivalent scrutiny in Australia and are high-risk. The Australian position is broadly aligned with — but somewhat more permissive than — the post-Alice USPTO § 101 analysis.

An Extension of Term (EoT) under sections 70–79H of the Patents Act 1990 is Australia's equivalent of the US Patent Term Extension (PTE) — it compensates pharmaceutical patent owners for time lost during TGA (Therapeutic Goods Administration) regulatory approval. Requirements: (1) The patent must be a standard patent for a pharmaceutical substance per se, or a method of use or composition of matter claim covering the substance; (2) The pharmaceutical substance (or a substance that contains the patented substance as an active ingredient) must have first been included in the Australian Register of Therapeutic Goods (ARTG) within 20 years of the grant of the patent; (3) The application for EoT must be made within 6 months of the first inclusion in the ARTG (this is a STRICT deadline — no extensions). How much extension: the EoT extends the patent term by the period from the patent's filing date to the date the first ARTG inclusion occurred, minus 5 years. The maximum extension is 5 years. The remaining patent term after the EoT cannot exceed 25 years from the date of the patent grant. Interaction with generic entry: generic drug companies routinely challenge EoT applications and the underlying patents at IP Australia via oppositions. If the EoT is granted, the generic company is blocked from marketing the drug for the extended period (subject to regulatory exclusivity separately). Key difference from US PTE: Australia's EoT calculation is simpler (filing to ARTG inclusion minus 5 years, capped at 5); the US formula is more complex (½ × IND period + FDA review period). Australia also allows EoT for subsequent ARTG inclusions in some circumstances.

Australia's inventive step test under s. 7(2) of the Patents Act 1990 and the US § 103 obviousness standard share the same ultimate question — would the invention have been obvious to a person skilled in the relevant art? — but differ in approach and application. Australia's two-step inventive step test: (1) Determine the common general knowledge (CGK): what would a skilled addressee have known without conducting a specific search — textbook knowledge, routine experimental practices, and generally known information in the field (but NOT information only discoverable by a specific targeted search); (2) Determine whether the claimed invention was obvious: would the skilled addressee, equipped with the CGK and the content of any applicable prior art document(s), have taken the step to reach the invention without inventive ingenuity? Post-Raising the Bar reforms: before April 2013, the prior art base for inventive step was limited to published documents in Australia and a handful of major patent databases. After the Raising the Bar Act 2012 (applying to applications filed from April 15, 2013), the prior art base for inventive step was expanded to include any published document worldwide — aligning with international standards. Key differences from US § 103: (1) No KSR 'flexible obvious to try' standard in Australian law — the obvious-to-try approach exists but requires a reasonable expectation of success with a finite number of identified candidates; (2) No formal 'secondary considerations' framework comparable to Graham v. John Deere — but commercial success, long-felt need, and failure of others are relevant; (3) Australia does not apply an 'analogous art' limitation in the same way as US pre-KSR TSM — post-Raising the Bar, any worldwide document may form the basis of an inventive step attack; (4) Common general knowledge plays a larger role in Australian inventive step than in US obviousness — CGK is the baseline from which the gap to the invention is measured; documents may be combined only with CGK or with a single document plus CGK, not freely combined with each other.