5.6.13.2 Re-examination process

Date Published

Key Legislation:

Patents Act:

  • s27 Notice of matters affecting validity of standard patents
  • s40 Specifications
  • s70 Applications for extension of patent
  • s97 Re-examination of complete specifications
  • s99 Statement by applicant of patentee
  • s101H Patentee statements
  • s101K Relevant proceedings and re-examination
  • s104 Amendments by applicants and patentees
  • s106 Amendments directed by Commissioner: patents
  • s107 Amendments directed by Commissioner: applications for standard patents
  • s112 Pending proceedings
  • Chapter 9 Re-examination of standard patents
  • Chapter 9A part 2 Examination, re-examination and opposition-innovation patents; re-examination of innovation patents

Patents Regulations:

  • reg 9.3(1) Copy of report on re-examination
  • reg 10.2(1) Commissioner to consider and deal with requests for leave to amend
  • reg 22.15A Certificate of verification and corrected translation

Consider whether re-examination is warranted

Re-examination is performed under the supervision of the supervising examiner whom is responsible for assigning cases within a section. This includes re-examination initiated by:

  • third party requests;

  • withdrawn oppositions;

  • section 27 notices;

  • an internal quality review process; and/or

  • new prior art located after acceptance or grant.

Re-examination must be conducted for third party requests and either an adverse or non-adverse report must issue.

In all other circumstances mentioned above, re-examination is conducted only if warranted and with agreement of the supervising examiner.

Where re-examination was initiated by either an internal quality review process or where new prior art was located after acceptance or grant, a decision should also be made within the examination section, and with agreement of the supervising examiner, as to whether re-examination is warranted. In these circumstances, Oppositions must be consulted before proceeding with re-examination.​​​​​​​

Considerations of re-examination timeliness

It is preferable that re-examination is undertaken by an examiner who is not the original examiner. However, the re-examination should be assigned to whomever is best placed to complete the task within the Customer Service Charter timeframe (see 3.2 Customer Service Charter (Timeliness Standards)). Consequently, there may be situations where the original examiner is asked to undertake the re-examination, particularly if that person is best qualified to understand the technology.

Where an internal quality review has been finalised with a finding that could jeopardise the validity of an accepted application, the re-examination report needs to be issued within 8 weeks from the date of the finalisation the finding.

Intention to Re-examine Letter

The Commissioner must not re-examine a patent where relevant proceedings are pending (s97(4) and s101K(2)). Where relevant proceedings are initiated after re-examination has commenced, the re-examination process must not continue (s97(5) and s101K(3)).

For re-examination of granted patents, an ‘intention to re-examine’ letter must be sent to the patentee at least 7 days before the re-examination report is issued. This letter is for the purposes of satisfying the requirements of s112. No letter is required for an application for which a patent has not been granted.

 

Where a third party requests re-examination, Patent Oppositions will create an “Intention to re-examine letter” in RIO and send it out to the patentee to inform them that the Commissioner intends to re-examine the patent unless advised within seven (7) days of the date of this letter that relevant proceedings are pending. The re-examination report must not be issued before the seven-day period has expired. 

However, if the Commissioner initiates re-examination, the system will generate an “Intention to re-examine letter” in RIO and send it out to the patentee to inform them that the Commissioner intends to re-examine the patent unless advised within seven (7) days of the date of this letter that relevant proceedings are pending. 

In both of these cases, the re-examination report must not be issued before the seven-day period has expired. If no reply to this letter is received within this time, it will be considered that there are no relevant proceedings, and the re-examination task will be released by either Patent Oppositions or the system respectively and assigned to the relevant section’s re-exam work basket.

Provided this letter has been sent, examiners should not include any further requests for s112 information in their re-examination reports, or request such information prior to completing the s104 voluntary allowance form (if appropriate) at the conclusion of the re-examination process.  When completing the form, the box relating to relevant proceedings pending should be checked (on the condition that the intention to re-examine letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings).

​​​​​​​​​​​​​​For re-examination tasks that pre-exist in PAMS and re-examination associated with s70 – Extension of Term, these tasks must be completed in PAMS. In the case that multiple third-party/owner-initiated requests for re-examination are received for a single application, the first request will be completed in RIO, and the second request onwards will need to be completed in PAMS. For PAMS related re-examination tasks, please refer to the information below. 

Before re-examining a granted patent, examiners need to check the file to see if there is any indication of court action. Where a third-party requests re-examination, Oppositions will enquire whether relevant proceedings are pending prior to the case file being referred to the relevant examination section. Therefore, for third-party re-examination requests, Oppositions will send the letter before the file of documents is forwarded to the examination section. However, if the Commissioner initiates re-examination, examiners will need to check the file. There may already be a statement that there is no court action, for example, in the case where there is a recent application for an extension of term under s70. If there is no indication of a court action on the file, examiners must write to the patentee and inform them that the Commissioner intends to re-examine the patent, unless advised within 7 days that relevant proceedings are pending. The re-examination report must not be issued before the seven-day period has expired. An example of the text of the letter to be used is shown in Annex B, see Annex B – Intention to Re-Examine Letter.

The examiner is to advise Oppositions (via email to ohl@ipaustralia.gov.au) once the “Intention to Re-Examine Letter” is sent and provide the relevant patent number and the date the letter was issued.

Provided this letter has been sent, examiners are not to make further request for s112 information in their re-examination reports, or prior to completing any s104 voluntary allowance form at the conclusion of the re-examination process. This is regardless of whether a first report or subsequent non-adverse report is being issued. When completing the s104 voluntary allowance form, the box relating to relevant proceedings pending should be checked after reviewing that the intention to re-examine letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings.

It is noted that under the Federal and Supreme Court rules, the Commissioner has to be informed of any court action on a patent. However, there have been instances where the parties have neglected to inform the Commissioner of a court action.

Re-examination considerations

Scope of the consideration

During re-examination, consideration is given to:

  • whether the specification does not comply with s40(2), s40(3), or s40(3A);
  • whether the invention is not patentable under s18(2) or s18(3), as applicable; and
  • whether the invention, so far as claimed in any claim:
    • is not novel;
    • does not involve an inventive step or an innovative step, as applicable;
    • is not useful; or
    • is not a manner of manufacture.

Examiners need to also note that prior use can be considered for novelty and inventive/innovative step purposes. Consideration of prior use is applicable where the examiner becomes aware of the information in the ordinary course of examination, or where evidence is provided to the Commissioner.

Prior to 15 April 2013, the only grounds available for consideration during re-examination were novelty and inventive/innovative step. The Raising the Bar Act 2012 expanded the grounds available for consideration during re-examination. Therefore, the expanded grounds are considered for re-examination reports issued on or after 15 April 2013. This is regardless of when the patent application was made, or the patent granted. It is noted that consideration of the expanded grounds applies whether the report is an initial report or subsequent adverse report.

Consideration of Section 40 and Usefulness

During re-examination, the considerations of s40 grounds and usefulness are the same as those considered during examination. The date of the examination request will determine how these considerations are made.

Examination Request Filed Before 15 April 2013 for standard patent applications, standard patents or innovation patents

In this circumstance, the s40 issues to be considered during re-examination are:

  • full description, including best method of performance;
  • clarity and succinctness; and
  • fair basis.

Usefulness should be considered only in terms of whether the claimed invention achieves the promised benefit (see 5.6.8.19 Useful (specific, substantial, and credible use)).

Examination Request Filed On or After 15 April 2013 for standard patent applications, standard patents or innovation patents

In this circumstance, the s40 issues to be considered during re-examination are:

  • clear enough and complete enough disclosure, including best method of performance;
  • clarity and succinctness;
  • support; and
  • omnibus claims.

Usefulness is to be considered according to the procedures outlined in 5.6.8.19 Useful (specific, substantial, and credible use).

Re-examination request

A request for re-examination must meet the following requirements:

  • Identify the documents on which the re-examination is to be based and state the relevance of each document;

  • If a document is not available in the Office, a copy of that document must accompany the request;

  • If the document relied on is not in English, a translation must be provided. For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided; and

  • Include evidence of the date and place of publication of each document (if this is not apparent from the document itself).

If the request does not satisfy these requirements, then re-examination cannot take place.

A person who has made a request may, by filing a notice in writing, amend, or withdraw the request before re-examination commences.

Material considered during re-examination

Information previously considered during examination does not provide an appropriate pretext for re-examination unless the information is part of a request by the patentee or a third party or, following an internal quality review. The documents considered in re-examination will most likely be those of the prior art base that the Commissioner considers necessary such as:

  • any published material that the Commissioner becomes aware of through Office staff;

  • any published material referred to by an opponent in a statement of opposition;

  • any material identified by a person requesting re-examination;

  • any material as informed by a court directing re-examination; or

  • any material from the prior art base which consists of information made publicly available only through the doing of an act anywhere, whether in or out of the patent area.

In addition, examiners are to check if there are any FERs that were not available at the time of examination and consider whether these are relevant.

When determining the relevance of documents or other material, for example brochures, consideration should be given to whether the information is publicly available (see 5.6.4.1 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)).

Material may also be provided in the form of a declaration or as hearsay evidence. 7.5.2 Admissibility of Evidence provide some guidance in this regard.

Where examiners are in doubt as to whether material meets the necessary prior art requirements, they should consult Oppositions.

Where re-examination initiated by a withdrawn opposition is considered warranted, examiners are not to automatically review all documents listed in the statement of grounds and particulars. Where the relevance of the documents is stated, examiners should consider this and focus on those documents where there is reason to believe they could be citations. Where there is no relevance indicated, examiners would not normally have reason to believe that any of the documents could be a citation. However, in the case of non-patent literature, the title of a document could suggest it is relevant. Finally, if the statement only lists a small number of documents without indicating their relevance, examiners are to review those documents since the opponent seems to have been selective and therefore the documents could be particularly relevant.

Incorrect Translation of Documents

Note that the information in this part only applies to translations filed after 25 September 2019.

Where a document accompanying a re-examination request is not in English, the person making the request is required to provide a translation (see Re-Examination Request above).  

In this situation, examiners should determine from the outset whether they have any doubts about the accuracy of the translation of a document. Examiners are not required to determine whether the document is a citation, but whether the translation appears to be incorrect (for example, lack of continuity). If examiners consider that the translation is incorrect, they should first consult Oppositions. If Oppositions are in agreement, then the person who made the re-examination request should be asked to file either:

  • a corrected translation of the document and a certificate of verification for the corrected translation; or
  • a certificate of verification for the translation.

Examiners should email Oppositions (ohl@ipaustralia.gov.au) asking for a corrected translation and/or certificate of verification to be obtained from the person who made the re-examination request under the provisions of reg 22.15A. The email should clearly identify the relevant document(s). Oppositions will issue a notification to the person and create a diary entry of the 2-month response date.

The re-examination process should in the meantime be placed on hold. Where no response is received in 2 months, re-examination should be carried out on the basis of the other documents identified in the re-examination request. Where the ‘incorrect’ translation is the only document, examiners should consult Oppositions.

Re-examination in light of the Traditional Knowledge Digital Library (TKDL)

The TKDL (http://www.tkdl.res.in/) is an Indian digital knowledge repository of traditional knowledge which was established in 2001 as a collaboration between the Council of Scientific and Industrial Research (CSIR) and the Department of Ayurveda, Yoga, Naturopathy, Unani, Siddha and Homeopathy. It includes information about medicinal plants and their formulations as used in traditional Indian systems of medicine. In 2019, the database contained information on about 250,000 medicinal formulations.

IP Australia and TKDL entered into an access agreement in 2011. Under the agreement, IP Australia has access to the database for searching purposes. Additionally, TKDL staff can advise IP Australia of TKDL documents they consider relevant to the patentability of an application that has been advertised as accepted. The notification will be sent to Oppositions in the form of either an email or a letter.

The email/letter will be addressed to the Assistant General Manager (Oppositions) and will, at least, contain the Australian patent/application number, relevant patent claim numbers and the TKDL Database Accession number.

Oppositions will acknowledge the notice of relevant documents has been received. The Commissioner will then decide if re-examination is warranted, based on the TKDL documents. If it is decided that a re-examination is not necessary, TKDL still have the option of requesting re-examination under s97(2).

Re-examination report

Initial report

Since the Commissioner will initiate re-examination voluntarily only if an adverse report will issue, the report will only refer to documents which give rise to an objection.

In contrast, where the patentee or a third-party requests re-examination, the Commissioner must re-examine the patent. In these circumstances, the report will address all documents provided in the request and should include positive or negative statements regarding each claim. It is possible that the report will be positive in respect of every claim. However, examiners need only report in detail on those documents found to be relevant, or discussed as being relevant by the person making the request. Any documents not considered to be relevant and not discussed as being relevant by the person making the request may be grouped together and addressed in terms of a positive statement.

A re-examination report should state that the application or patent has been re-examined, outline the findings and, in the case of an adverse report, give the applicant or patentee a period of 2 months from the date of the report to respond.

The initial re-examination report must take into account any information or submissions on file, including any provided prior to acceptance, or in evidence filed during opposition. Areas of doubt should be resolved, wherever possible, before issuing a report. The report must give sufficient detail of the nature of the objection and the examiner's consideration of any available information to enable the applicant or patentee to address the issues in as few responses as possible. An adverse report should explicitly identify each claim that is rendered either not novel or lacking an inventive/innovative step.

Examiners are to review whether an intention to re-examine letter was sent to the applicant or patentee. Provided this letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings, examiners are not to make further request for s112 information in their re-examination reports. This is regardless of whether a first report or final non-adverse report is being issued.

The standard required for an adverse re-examination report is the same as the third report standard.

All re-examination reports, both adverse and non-adverse, must be supervised by a senior examiner (see Supervision of Reports below). Examiners are to send the re-examination report to the applicant or patentee as per normal and provide Oppositions with the case number and actual date of sending the re-examination report.

While the majority of re-examination tasks are able to be completed in RIO, re-examination tasks that already exist in PAMS and re-examination tasks associated with s70 (Extension of Term) will need to be actioned in PAMS accordingly. For these PAMS re-examination tasks, please note the following:

  • For re-examination of patent applications prior to grant, examiners are to ensure that a bar to grant is in place by completing the “Defer of grant details” box in the “Examination Details” screen in PAMS.
  • All re-examination tasks in PAMS are done as an “Edit Ecase” since there is no re-examination category task in PAMS. The appropriate template must be used.
  • If after re-examination considerations, the decision is not to re-examine, then a case note must be placed on PAMS case file with a subject stating exactly ‘Decision not to re-examine’. This is to ensure the efforts of re-examination are captured in our reporting systems.

Applicant’s or patentee’s response after initial report

Statement under Section 99 or Section 101H

Where an adverse re-examination report has been issued, the applicant or patentee may, within a period of 2 months after the day on which the report was sent:

  • file a statement under s99 (or s101H for innovation patents) that disputes the findings of the report;

  • amend the complete specification either voluntarily or as a result of a direction under s106 or s107 to amend; or

  • do both of the above.

Copy of the Statement under Section 99 or Section 101H

A copy of the statement under s99 or s101H must be given to:

  • an opponent in the case of re-examination under s97(1) of an application which is under opposition;

  • a person who requests re-examination if that person is not the patentee; and

  • the court, if a prescribed court directed the Commissioner to re-examine the patent under s97(3) or s101K(1).

Subsequent adverse re-examination reports

If an applicant or patentee does not respond to a re-examination report, the Commissioner is likely to set the matter for hearing with a view to refuse the application or revoke the patent (see 5.6.13.4 Refusal to grant or revocation following re-examination). However, in some circumstances, the Commissioner may choose to issue a subsequent re-examination report, rather than head directly to refusal or revocation.  These include:

  • where an applicant or patentee has made a reasonable attempt to respond to the initial re-examination report (either by way of submissions or proposed amendments), but where there are still some issues outstanding. In this situation another re-examination report can be issued.  

    Where a subsequent re-examination report is based on a s99 or s101H statement by the applicant or patentee that was not accompanied by a request for leave to amend the complete specification, the report should address all the arguments raised in the statement.

    Where a subsequent re-examination report is to be issued and the applicant or patentee has requested leave to amend the complete specification, then the practice of Proposed Amendments are Allowable or Proposed Amendments are not Allowable below should be followed as appropriate.

 

  • where an applicant or patentee advises the Commissioner in writing that they intend to prosecute the application and can provide satisfactory reasons why they have been unable to meet the 2-month response deadline, despite taking all reasonable steps to do so.

    Consequential requests for further time to respond to a re-examination report will be considered by Oppositions. If appropriate, Oppositions will issue another re-examination report with a new 2-month response time.

If subsequent re-examination reports are issued, similar considerations as outlined in Initial Report above apply.  In particular, the report must be supervised by a senior examiner or supervising examiner depending on the circumstances and Oppositions consulted before the report is issued (see Supervision of Reports below).

However, issuing subsequent re-examination reports would not be appropriate in the following situations:

  • in the case of re-examination directed by a prescribed court (s97(3) and s101K(1)); and
  • in the case of re-examination during an opposition. In this circumstance, the Assistant General Manager (Oppositions) should be consulted prior to issuing a subsequent re-examination report.

Timeframe for actioning an applicant’s or patentee’s response to a re-examination report

In accordance with the Customer Service Charter Timeliness guidelines, examiners are to action a response to a re-examination report within 8 weeks from receiving the response.

There is no specific legislative provision for the Commissioner to issue further re-examination reports in response to a submission, or to extend the time to respond to a re-examination report (except under s223). Instead, the subsequent re-examination report is a completely new re-examination action, re-starting the re-examination process and with its own 2-month response deadline.

The subsequent re-examination report provides the applicant or patentee with another opportunity to overcome objections raised in the previous re-examination report. However, it is only issued in the understanding that the applicant or patentee is genuinely attempting to address the objection as expeditiously as possible.

Re-examination is intended as an efficient legislative means to dispose of invalid claims. It is inconsistent with this scheme to have protracted debates on the same issues over multiple re-examination reports.

Proposed amendments are allowable

Where a response to a re-examination report includes a request for leave to amend the specification, the Commissioner must report on the request according to s104(2) and reg 10.2(1). Where the proposed amendments are allowable and overcome the issues raised in the re-examination report, the procedure concluding the re-examination to be followed is 5.6.13.3 Completion of re-examination.

Where the amendments are allowable, but do not overcome the objections outlined in the re-examination report, examiners should consider issuing a subsequent re-examination report. The report must be supervised by a senior examiner or supervising examiner depending on the circumstances and Oppositions consulted before the report is issued (see Supervision of Reports below).

Issuing subsequent re-examination reports after proposed amendments have been filed is distinctly different from issuing further examination reports on a standard patent application or innovation patent after proposed amendments have been filed. For further examination reports, the Commissioner should report as if each proposed amendment had been made. In contrast, for the case of a report in a subsequent re-examination action, there is no legislative basis for reporting as if each proposed amendment had been made.

Therefore, in this situation any subsequent adverse re-examination report should:

  • formally maintain any outstanding issues that were raised in the previous report and which were not overcome by the applicant's or patentee's statement under s99 or s101H (by reproduction of the text of the objections, or by reference to the report); and

  • acknowledge that, although the proposed amendments are allowable, they (and any statement under s99 or s101H) do not overcome the issues raised in the previous re-examination report, giving appropriate explanations.

Leave to amend should not be formally granted until the issues raised in the re-examination report have been overcome, and no further issues arise as a result of the proposed amendments. Such practice:

  • expedites the re-examination process as much as possible; waiting allowance of the amendments would interrupt the process, as a subsequent report could not be issued and new amendments proposed until the previous amendments had been advertised and allowed; and

  • removes the need for the applicant or patentee to file a new request for leave to amend after each re-examination report is issued (with the accompanying fee).

Proposed amendments are not allowable

Where a response to a re-examination report includes a request for leave to amend the specification, and the amendments are not allowable, the report on the request for leave to amend under s104(2) and reg 10.2(1) should proceed as a separate action from the re-examination process. Examiners need to contact Patent Oppositions (ohl@ipaustalia.gov.au) with the application number and the service request number associated with the re-examination task to request that a separate s104 task be created in RIO. Thus, any adverse report on the allowability of the voluntary amendments should not comment on the substantive issues that were raised in the re-examination report. A subsequent re-examination report should not be dispatched until the allowability issue has been resolved. In particular, examiners should not issue a re-examination report on the specification as proposed to be amended, if the amendments are not allowable.

Where an adverse report on the amendments is issued, the applicant or patentee is given 1 month in which to respond and is informed that if no response is received within this time, the Commissioner may set the matter for a hearing to consider concurrently:

  • refusal or revocation of the patent or patent application on the basis of the re-examination report; and

  • refusal of the request for leave to amend on the basis of the adverse report under reg 10.2(1).

If a response to an adverse report on the allowability is received and a subsequent adverse report is warranted, then a further month should be given for a response. The adverse report should also include the above comments.

Once allowable amendments have been filed, the procedures outlined in Proposed amendments are allowable above should be followed.

It is to be noted that Oppositions is to be consulted before any adverse report on the allowability of the voluntary amendments is issued.

Supervision of reports

Re-examination reports are to be supervised by a senior examiner or, if the report is done by a senior examiner, it is peer-reviewed by another senior examiner. This applies to both adverse and non-adverse reports at the initial and second report stages.

All re-examination reports, both adverse and non-adverse after submission of the task (apart from third and higher adverse reports (see below)) will be automatically assigned to the selected senior/supervising examiner for supervision/quality assurance (QA). If the senior/supervising examiner does not approve, they can send the task back to the examiner for correction. Once the report is approved and the QA task is submitted by the senior/supervising examiner, the report will be assigned to Patent Oppositions for editorial review. For re-examination tasks completed in PAMS, an email must be sent to Patent Oppositions (Email to ohl@ipaustralia.gov.au) advising that supervision is complete. If the re-examination report is approved by Patent Oppositions, it will be sent out to the applicant or patentee.
 

Where a third adverse report is to be issued, this is to be considered by a supervising examiner. If the supervising examiner agrees that there are valid issues and that the arguments have reached an impasse, the case should be referred to the Assistant General Manager (Oppositions) to determine whether the matter is best progressed by way of a hearing.

Fourth adverse reports dealing with substantive problems must be reviewed by Oppositions before being dispatched, to determine whether refusal or revocation action should be initiated instead.

It should be noted that it is the overall number of reports that have been issued since the initial re-examination report that is counted, regardless of whether they were strictly adverse re-examination reports, or adverse reports on s104 amendments filed in response to a previous re-examination report.

Once supervision of the re-examination report is complete, Oppositions is to be advised by email (ohl@ipaustralia.gov.au). Oppositions will perform an editorial review to ensure that all reports are broadly consistent in style. After making any changes directed by Oppositions, the examiner is to dispatch the report in the usual manner. However, Oppositions must also be advised of the case number and actual date of the report was issued. Oppositions will create, where appropriate, a diary entry of the 2-month response date and send a copy of the report to persons who are entitled to receive this report.

An outline of the process, showing the major steps, is provided in the flowchart at Annex A - Re-Examination Processing. (Note that this flowchart does not comprehensively include all variations and their steps).

A re-examination checklist is provided at Annex C – Re-Examination Checklist.

Copy of the re-examination report sent to opponent or third party

Following supervision of a re-examination report, examiners should send the re-examination report to the applicant or patentee as per normal. Examiners, and any senior or supervising examiners, who send out reviewed re-examination reports, should also email Patent Oppositions (email to ohl@ipaustralia.gov.au) and provide the following details:

  • case number; and
  • date that the report was issued.

Oppositions will send a copy of the re-examination report to:

  • the opponent following re-examination under the circumstances of opposition; or

  • the person who requested re-examination after grant of the patent, if that person is not the patentee.
     

This copy of the report will also be sent if the report is issued immediately following review by Patent Oppositions.

A similar practice is to be followed if a subsequent re-examination report is issued in light of the patentee's statement under s99 or s101H. The third party will be advised by Oppositions that the Commissioner has decided to re-examine the patent again and sent a copy of the new re-examination report. Sending the third party a copy of the initial re-examination report is a statutory requirement (reg 9.3(1)). Subsequent reports are initiated by the Commissioner and are therefore not covered by this regulation. They are, however, sent to the third party as a matter of courtesy, as are any amendments or statements under s99 (or s101H) filed by the patentee.

Any material sent to the third party should be accompanied by a covering letter (generated by Oppositions) informing them that:

  • this material is being sent to them as a matter of courtesy only (or as a consequence of reg 9.3(1)); and

  • that they have no right to any further involvement in the re-examination process (such as filing submissions for the examiner to consider, to appear at any refusal or revocation hearing, or right of appeal of any decision the Commissioner may subsequently make), but that the Commissioner will endeavour to forward to them any relevant correspondence concerning the re-examination process.

Where there are proposed amendments, the opponent needs to be additionally informed that they have the right to oppose the amendments under s104(4) once leave to amend has been granted and advertised in the Official Journal. However, they should be monitoring the Journal themselves to ensure that they know when leave has been granted and not relying on the Commissioner to advise them when advertisement will occur.