One of the goals of strategic examination is to ensure that the examination process is conducted as efficiently as possible without adversely affecting the quality of our service. There can be cases where it is impractical or inefficient to conduct a full examination of the application. In these cases, examiners may find it necessary to restrict the report.

The following sections seek to build awareness and understanding on the use of restrictions including:

where and when it may be appropriate to apply restrictions; and
how such restrictions may provide a more focused examination process which would expedite the overall prosecution.

What is meant by 'restriction of the report'

When we refer to “restricting” or “a restriction” of the report, we are referring to any type of limitation imposed within the report.

In practice there are two key types of restrictions:

Limiting the scope of the search and/or examination
This specifically refers to situations where we limit the scope of search and/or examination to a subset of claims or described invention in the specification; and
Withholding opinion on search and examination
This specifically refers to situations where we completely withhold opinion on the claims or subject matter.

Limiting the scope of the search or examination is more in line with IP Australia customer centric focus, which is to conduct as full examination as possible where it practical to do so. Providing the applicant with an opinion on relevant issues early in the examination process will ensure that the matter is progressed in an efficient manner.

When is restriction of the report applicable

As with all situations in examination, the decision to impose a restriction on the report is on a case-by-case basis. When considering if a restriction of the report may be applicable, examiners are encouraged to consult with a senior or supervising examiner before taking further action on the case.

In practice there are a number of situations where a restriction may be an appropriate course of action. The following are situations where the strategic use of a restriction may be beneficial to the examination process.

Nature of the invention cannot be determined

Where there is uncertainty on the nature of the invention, (for example, due to a poorly drafted specification), examiners may not be able to reasonably assess all grounds of examination. In such cases it may be justified to withhold search and opinion on all substantive grounds and seek clarification on the nature of the invention from the applicant. Adopting this approach reduces unnecessary effort and enables the examination to be targeted towards what the applicant considers to be the true nature of the invention.

In some cases, it may be possible to determine the nature of a particular aspect or part of the invention. In these circumstances, examiners may consider restricting the report to the identified aspect. If examiners elect to examine a specific aspect this needs to be clearly communicated to the applicant.

More than one invention claimed (Lack of Unity)

For efficient examination of such cases, it may be appropriate to restrict the report to one of the claimed inventions. In practice the report is normally restricted to the first claimed invention.

Examiners should be aware that there can be specific circumstances where this is not followed. For example, where inventions are closely related, it may be possible to examine one or more of the additional inventions with minimal additional effort (such as if the prior art to be considered for each invention is similar, or where earlier search results are available (such as FERs) which have examined at least some of the additional inventions).

Sometimes examination can be restricted to later inventions. This is where the only FERs available have searched and examined the later inventions.

In rare cases, examination can be reserved on all inventions. This can be done when it is unclear from the FERs available which invention the applicant wants to pursue (for example, if the FER restricts examination to the 2nd invention, then subsequently abandons these claims for an entirely new set of claims).

In some cases, it may be more efficient in terms of the overall progression of the application to call the attorney or applicant and discuss the issues surrounding the lack of unity. This may assist the examiner in determining what the applicant considers to be the main invention, and what invention they would prefer to be examined.

Incorporation of new matter

The incorporation of new matter is generally not allowable under Australian law. However, there may be cases where new matter may have to be incorporated into the specification such as through amendments made under Article 19 or 34. Claims directed to this new matter are not allowable and are not required to be examined.

Examiners will need to be aware that in these cases there may well be claims that are not directed to the new matter. These claims may be allowable. Examiners could restrict the examination report to these allowable claims in such cases.

Non-patentable subject matter

When the invention claimed is clearly not in respect of a manner of manufacture and it is not readily apparent that the specification, taking into account the common general knowledge in the relevant technical field, contains patentable subject matter that could be claimed, then examiners may consider withholding opinion on novelty and inventive step. Following such an approach seeks to avoid unnecessary effort on examining claims that are clearly not patentable.

3.3.3 Reserving Opinion and Restricting Search

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