Step 6: Examination of patent application
The examination of a patent application is the process in which a patent office reviews the application to assess its compliance with patentability criteria which includes evaluating the invention’s novelty, non-obviousness, utility, and sufficiency of disclosure. The results of the examination are communicated in the office action.
What happens in the Examination of a patent application
- Filing of patent application: The patent application is submitted to the relevant national or regional patent office. The application includes a description of the invention, claims defining the scope of protection sought, and any necessary drawings or supporting materials. The applicant usually pays filing fees at this stage.
- Formality Examination: The patent office conducts a formality examination to ensure that the application meets the required formal requirements. This includes verifying that all necessary documents and information have been provided and that the application is filed within the prescribed time limits.
- Prior Art Search: A patent examiner or a search authority appointed by the patent office performs a search for prior art. The prior art includes existing patents, scientific literature, and other publicly available information that may be relevant to the claimed invention. The search aims to identify prior inventions or technologies that may affect the patentability of the claimed invention.
- Substantive Examination: The examiner evaluates the patent application’s compliance with patentability criteria, such as novelty, inventive step (non-obviousness), and industrial applicability. The examiner reviews the claims in detail, compares them with the prior art found during the search, and assesses whether the invention meets the necessary requirements for patent protection.
- Office Actions: If the examiner identifies issues with the patentability of the invention, an Office Action is issued. The Office Action outlines the reasons for rejections, objections, or requests for further clarification or amendment. The applicant is given an opportunity to respond to the examiner’s concerns and make amendments or arguments to support the patentability of the invention.
- Amendments and Arguments: The applicant can amend the claims, description, or drawings of the patent application based on the examiner’s objections or rejections. The applicant may also provide arguments, evidence, or expert opinions to address the examiner’s concerns and demonstrate the patentability of the invention. This process may involve multiple rounds of Office Actions and responses.
- Allowance or Final Rejection: If the examiner is convinced that the application meets the patentability requirements, an allowance is issued, indicating that the patent will be granted. However, if the examiner maintains rejections and the applicant’s responses fail to overcome them, a Final Rejection may be issued. The applicant may have the option to appeal the decision or take other legal actions available in that specific country’s patent system.
- Grant and Publication: If the application is allowed, the applicant typically pays the necessary fees. Once the fees are paid, the patent office grants the patent, and it is published in the official patent register or database.
Your patent application is taken for examination after receiving request for examination. You can make such request for examination within up to 5 years time from the filing date. Once the request for examination is made the Australian patent office generally takes upto 12 months to examine your patent application.
Your patent application will move to “acceptance step” if it does not have any issue and satisfies patentability criteria. Incase your patent application has some issue or amendments to be made then the examiner will send a repot explainig the details of issue.
If the amendments are suggested by patent office then no fees needed to pay. You’ll need to pay a fee of $250 if you decide to make amendments to your standard patent application before examination.
You can also request an expedited examination to have your patent examined faster.
After the application is filed, the Australian Patent Office takes the application up for examination (usually in about 12-36 months). In this stage, patent examiners at Australian Patent Office conduct their own search related to your invention (patent application) and issue and office action.
Fast track examination
The examination of a patent application may be accelerated, the Australian Patent Office will advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program.
If one of the participating offices decides that at least one claim in your application is allowed, you can ask another office to fast track examination of your corresponding application. Work carried out under the Patent Cooperation Treaty (PCT) can also be considered, such as a written opinion or examination report.
There are two patent prosecution highway programs that allow you to fast track examination of your patent application in Australia as well as overseas.
If you’re looking to quickly protect your idea as part of your commercialisation plan, you may decide to request expedition.
1. Examination under the Global Patent Prosecution Highway
The Global Patent Prosecution Highway (GPPH) is an agreement between over 20 patent offices around the world, the Nordic Patent Institute, and the Visegrad Patent Institute (VPI). You can do this if you:
- Need to be able to enforce your patent soon
- Have an investor that is waiting on a patent to be granted
- Urgently need to begin production or complete market research
- Need to license your invention to a third party.
2. Examination under the European patent prosecution highway agreement
The IP Australia-European Patent Office Patent Prosecution Highway (IP Australia-EPO PPH) is an agreement between us and the European Patent Office (EPO). This program leverages fast-track examinations so you can obtain patents faster and more efficiently.
Australian applications : You can request expedited examination for Australian applications when:
- An associated application has been examined by the EPO
- At least one claim has been determined to be patentable/allowable.
Time required for examination of application: Australian Patent Office takes the application for examination (in about 12-36 months).
Official Patent Examination Fees in Australia is AUD 490
| Examination of Application | Responsibilities | |
| Inventor |  | the patent agent or patent attorney makes a request for examination on your behalf. |
| A patent agent or attorney |  | Making a request for examination |
| Patent office |  | receive a request for examination and examiner check the patent application for patentability and other criteria and generates search report (office action) |
Next article : Step 7: Office action- Response to objections
- Indian Patent Office, Govt. of India
- Patent Facilitator for Start-ups, Startup India Govt. of India
- Bachelor’s degree in Electronics and Telecommunication engineering.
- Author of multiple books on Patents and IPR including a best-selling book on “How to patent an idea in India” which has been selected as the “Memorable Business Book of 2018” by Amazon
- Books are included in the syllabus of Educational Institutions as textbook and reference book on subject of IPR and Patents
- For over 15 years, Prasad has helped protect the intellectual property rights (IPR) of more than 1800 clients, including individuals, entrepreneurs, and educational institutes. This includes patents, trademarks, designs, and copyrights.