3.3.1 Use of FERs (earlier search and examination reports)

Date Published

Overview

One of the guiding principles in strategic examination is to utilise time and resources efficiently to provide the best outcome for our customers. IP Australia recognises the benefit in utilising earlier search results and reports from foreign IP Offices (FERs). The use of these materials can improve examination efficiency by reducing the overall time taken to provide an opinion. ​​​​​​​

Consideration of search and examination material from other IP Offices at each stage of the examination is an essential part of strategic examination process.    

What additional material can be utilised during examination​​​​​​​

The type of search and examination material from other IP Offices that can be consulted during examination include the following:

  • IPRPI/IPRPIIs (prepared by IP Australia or other International Authorities);
  • National search and examination reports prepared by foreign IP offices;
  • Supplementary International Search Reports;
  • PCT Third Party Observations; and
  • National search and examination reports prepared by IP Australia (such as reports on parent applications or applications covering similar subject matter by the same applicant).

Retrieving Foreign Examination Reports (FERs)

Foreign Examination Reports (FERs) are stored in Family Member Analyser (FMA) for all national applications. 

Customer Experience Group (CEG) process new applications not including divisional applications. CEG prepare the case file by uploading a FER summary report to the RIO workbench and source X or Y category non-patent literature (NPL) documents cited in the FERs through the Library. Uploading a FER summary report to the RIO workbench ensures the application is assigned to the appropriate work basket type (With International Exam Report; With Search Results; Without Search Results). When FMA is opened it will retrieve any updates which have occurred since it was last opened, including when the FER summary report was generated.  

Where FMA is unavailable, Examiners may need to access FERs directly from a foreign office’s file wrapper and cited FERs should be saved to the RIO Workbench. Foreign offices’ file wrappers can be accessed through FMA or via the internal patent examination workbench.  

In the unlikely event that a cited FER is later removed from the foreign file wrapper, the FER will no longer be available in FMA. The FER will remain archived, and examiners may email ITG to request retrieval of the archived document if necessary.  Examiners should then consider saving this document to the RIO case file unless there are obvious reasons for it not to be, noting that information on the case file is publicly accessible. 

A guide on using Family Member Analyser can be found in the RIO Manual - Family Member Analyser. 

Factors to consider when using a FER

Examiners will need to form a judgement on a case-by-case basis as to what reliance can reasonably be placed upon the FERs. In forming this judgement, examiners need to validate the opinion in the FERs taking into account any difference in law and practice and likelihood of more up to date information being available. ​​​​​​​

Law and practice differences

Examiners need to be aware that there are subtle differences between the Australian law and practice and that applied in other IP Offices. The following are examples of how differences in law and practice can affect the relevance of the FER in relation to the Australian application.​​​​​​​

Notable law and practice differences:

  • Differences in what is considered excluded subject matter. For example, practice in relation to stem cells and embryos differ between EPO and Australia;
  • Differences in the prior art base, for example in the US the prior art base for novelty and obviousness (inventive step) are the same. As such US examiners can use P and E citations for the purposes of inventive step. Such documents are not citable for inventive step in Australia;
  • Non-patent literature published after the relevant priority date can be used as citations in some countries (the US). Such publications are not citable under Australian law;
  • Double patenting considerations in the US are broader than those applied in Australia. Documents cited under a double patenting objection in the US may be relevant prior under Australian law;
  • The FER may raise issues that are not sustainable or relevant under Australian law, such as claim formatting issues specific to the EPO;
  • Claim construction practices may differ, for example the interpretation of ‘product by process’ claims and language such as “for use” or “comprising” differs from country to country. Therefore, some issues regarding claim scope raised in a FER may require additional explanation on claim construction or may not be relevant to the Australian application at all;
  • Means plus function (that is, “means for…”) claims are interpreted with limited scope in the US. More specifically the US limit the scope of such claims to the embodiments described; and
  • The assessment of unity differs in some jurisdictions, some countries apply overly narrow, literal, or technical approach.

Where the objection in the FER is based on a particular law and practice issue, it may not be possible to take a similar objection under Australian law.  In such cases examiners will need to consider if the information in the FER could be used as the basis for a different ground of objection under Australian law. 

Grant of the Related Foreign Application

In reviewing the FER, the related foreign application may have been granted prior to examination of the Australian application. It may be the case that the applicant will adopt a similar strategy to that used in the related foreign application.

In such cases examiners should be mindful of the material put forward by the applicant in the related case as they may render documents or other lines of argument relied on by the FER redundant.

Given the progression of the related foreign application, examiners will need to determine how best to formulate their report to ensure efficient utilisation of resources and time in order to achieve the best outcome for all stakeholders. 

FERs and report formulation

The use of FERs under strategic examination is about ensuring the efficient utilisation of time and resources to achieve the best outcome for customers. This, however, needs to be balanced against providing a report that gives our customers a clear understanding of the issues affecting the application. Clearly articulating the issues to the customer places them in a better position to formulate a response that will best progress the application.

The level to which the Examiner relies on the reasoning of the FER is discretionary. Examiners will need to form a judgement on what information from the FER can be utilised in formulating their report. 

When relying on the FER, examiners will need to consider what information is applicable under Australian law and, where appropriate, modify the FER reasoning so that it is consistent with Australian law (see Law and practice differences).

Examiners may also consider including additional information to demonstrate that they have identified and considered important aspects of the invention. For example, examiners could provide:

  • Specific discussion in the report of a key feature;
  • Identification of better references within the citation relating to key features;
  • Further explanation on aspects of claim construction;
  • Discussion of a difference between the foreign and Australian claims and why this difference is immaterial or explaining claim concordances;
  • Discussion of a key difference between the foreign and Australian law and how Australian law applies; and/or
  • A statement as to why a particular claim may be novel and inventive.

An example of such a situation is if there are gaps in the reasoning for a particular objection in the FER. Consequently, the reasoning provided in the FER does not support an objection on the same grounds under Australian law. In this instance the examiner could consider utilising the information in the FER to raise a different objection under Australian law where the gaps in the reasoning can be easily rectified. For example, a novelty objection in a FER may be recast as an inventive step objection under where the missing information can be readily attributed to the common general knowledge in the art.

In some cases, the information in the FER may not be relied on to produce the report. In such cases, examiners will need to determine the most efficient course of action to take in formulating the report. It may be necessary to consider conducting an additional search, see the practice outlined in 4.3.3 Additional Searching.

Referencing multiple FERs

In some cases, examiners may be presented with multiple FERs. These FERs may discuss the same citations, claims etc.  In some instances, the FER may refer to same citation but focus on different claims within the same claim set, or they may have divergent opinions on the claim set. The difference in opinion across the FERs can be attributed to law and practice differences.   

Whatever the situation, examiners need to come to a judgement on the reasoning provided in each of the FERs. Examiners will then need to determine what information is applicable under Australian law and formulate the report accordingly. This may mean that it is necessary to reference multiple FERs and multiple citations. Where examiners utilise citations and reasoning from multiple sources, they should clearly indicate from which FER the material was obtained from.

Where multiple citations have been sourced, examiners may provide a comprehensive discussion of the citation(s) they consider the “best citation(s)”, or one citation where all citations are of equivalent disclosure. Examiners can then refer to a representative selection of the other relevant citations in a more general manner. It may be the case that when the applicant addresses the issues raised in relation to the best citation, also resolve the issues with the other relevant citations.

Raising new objections and citations (piecemeal examination)

The examination process is a dynamic one and there may be instances where opinion on certain matters changes particularly in light of new information being provided to or becomes available to the examiner. Typically, this information comes out of new or additional FERs that were not available at the time the report was issued. Examiners will need to review the FERs at further report stage to see if there is new material that may impact the consideration of the application. For example, a new FER may provide a better citation. This new or better citation may alter the grounds of objection, that is, ground of objection shifts from inventive step to novelty etc.  

While it is good practice that all substantive matters are raised as early as possible, there will be times where examiners may need to alter the grounds of objection or raise new citations. Such an action may cause inconvenience, but it is more important that the applicant is informed of all significant issues and that these are identified prior to grant.  

In deciding whether to raise new objections examiners may find the SRC framework useful. Examiners should consider who the relevant stakeholders are, their needs and what the risks are associated in raising or not raising the objection. Where it is deemed necessary to raise new citations or objections based on new material, examiners, will need provide the applicant with details as to why the change in opinion is justified. The level of explanation required to justify the change will vary depending on the circumstances, for example:

  • where new material has become available a simple explanation as to when and where the new material was located may be all that is required; or
  • where new grounds of objection are raised at a later report stage it’s advisable to provide detailed reasons as to why the objection is being raised. This is because the new objection will be unexpected to the applicant.  

Given that the new objection may be unexpected the report should be formulated to provide the applicant with enough information to enable them to engage with the issues in a constructive manner. 

FERs and Lack of Unity

Examiners should assess the unity of the Australian claims at each stage of examination and use their judgement to take a pragmatic approach to assessing unity raised (or not raised) in the FERs.

Examiners may consider:

  • Unity raised in a FER is based on an overly narrow, literal, or technical approach. Examiners may reject this approach to unity or may consider raising lack of unity with an alternative grouping of inventions. Examiners may need to assess whether further searching is required in light of any changes in approach to unity; and
  • The unity objection raised in the FER is prima facie reasonable, such an objection may be relied upon and referred to in the examiner’s report.

If lack of unity exists, examination is usually restricted to the first claimed invention. However, there are specific circumstances where this practice is not followed (see 3.3.3 Reserving Opinion and Restricting Search).