Date Published

National examination often has regard to work previously performed by IP Australia and other IP offices on related family members.  Where this work can be used during examination, this can provide a higher level of quality, as well as considerable efficiencies for both IP Australia and the applicant.  Examiners should have due regard to relevant issues and citations raised in FERs and search results at all stages during examination.  They should also be mindful that relevant art may become available at further report stage and that earlier citations may later become relevant, particularly where substantial amendments have occurred during prosecution.

The following guidelines outline the procedures for examining national applications where there is a corresponding FER available.  In general, examiners should utilise previous search and examination results as far as possible to reduce the amount of rework.  In order to do this, examiners will need to form a judgement on a case by case basis as to what reliance can reasonably be placed upon the FERs.

Note: Unless otherwise indicated, FERs include IPRPI/IPRPIIs, Supplementary International Search Reports, PCT Third Party Observations, national search and examination reports prepared by IP Australia (e.g. reports on (grand)parent applications), and foreign national search and examination reports prepared by the International Authorities and other foreign offices. During examination, consideration should also be given to any granted forms of the claims that are available, e.g. EP or US granted patents.