Maiwald Blog

Acceptance deadlines. What, where and how long?

by Dr James Neuhaus

According to the national patent laws of some countries, a patent application must be brought into a state suitable for allowance by a specified time, measured either from the application date/priority date or the date of issuance of the first Office Action of substantive examination.

The main countries where a patent attorney needs to be aware of these shortened timeframes are Australia (AU), New Zealand (NZ), India (IN), South Africa (ZA).

Australia and New Zealand

Acceptance deadline: 12 months after the issuance of the First Examiner's Report. If the Examiner has not accepted the application by this time, then the application will be deemed to be rejected. It is therefore advisable to respond to Office Actions as quickly as possible, in order to have time for a back and forth dialogue between the Applicant and the Examiner.

A rejection due to an expired acceptance deadline in both AU and NZ can be bypassed through the filing of a divisional application, which will then have a new acceptance deadline. It must, however, be remembered that in NZ divisional applications cannot be filed more than 5-years after the filing date of the parent application.

South Africa

Acceptance date: 12 months after the filing of a national stage PCT application, or 18 months after the filing of direct application.

Since ZA patent applications do not undergo substantive examination, this deadline applies simply to formality requirements.

India

Acceptance deadline: 6 months (extended by 3 months upon request) after the issuance of the First Examination Report. Unlike in AU and NZ, the application will not be directly rejected upon the expiry of this deadline, but rather will take place during an oral hearing.


Our blog contributions shall provide an overview with regard to legal topics, legislation and case law and are supposed to provide some general information rather than constituting any specific advice. Please do not hesitate to contact Maiwald and in particular the authors of the particular contributions if have any questions on the addressed topics or on other legal issues.

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