2.1.6.1 Overview

Date Published

Examination must be conducted efficiently by focusing on the key issues that affect prosecution of the case.  Examiners should make appropriate use of FERs and other search results available at each stage of examination (see 2.1.9 Guidelines for Using IPRPI/IPRPIIs and FERs in Examination). Reports must be clear, accurate, informative and comprehensive to the extent indicated by applying the principle of providing detail at the most effective stage as discussed in 2.1.1 The General Approach to Examination.

Reports should include sufficient detail to ensure that major problems can be understood.  At each stage reports should emphasise and detail the serious issues affecting progression of the application. In this regard, examiners should particularly focus on the key issues of invalidity, especially novelty, inventive step and patentable subject matter.

Examiners should report in detail on the independent claims and may generally report more broadly on the dependent claims. However, more detail should be provided for the dependent claims where examiners are readily able to determine that a particular feature or combination of features in those claims relates to the inventive concept and therefore likely to be promoted to an independent claim at a subsequent stage.  Multiple independent claims, e.g. those with similar features, can be grouped where possible and discussed under the one objection.

All objections must have a statutory basis and should be succinct. They should commence by identifying the statutory basis of the objection, and follow with sufficient explanation, including details of any premise upon which the examiner relies (such as interpretation of a term) and relevant passages of citations, for the applicant to understand the nature of the issue sufficiently to address it.  Different grounds of objection should not be mixed together, except for novelty and inventive step, which may be combined where appropriate (see 2.1.6.2.6 Novelty and Inventive Step).  In most cases it can be assumed that claims which are not novel also lack inventive step and these issues need not be reported on separately.

Note: For:

•  standard patent applications with an examination request filed on or after 15 April 2013;
•  innovation patents with an examination request filed on or after 15 April 2013; and
•  innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent;  

objections under the grounds of lack of support and lack of clear enough and complete enough disclosure, or lack of support and lack of usefulness, may be combined where appropriate (see 2.11.7.2A Subsection 40(2)(a) ‘Clear and Complete Disclosure’ v Subsection 40(3) ‘Support’ and 2.11.7.10A Support Required for Pharmaceutical Inventions and Methods of Treatment).