Not All Claims Previously Searched and/or Examined

Date Published

Note: The information in this part only applies to:

•  standard patent applications with an examination request filed before 15 April 2013.  
•  innovation patents with an examination request filed before 15 April 2013.
•  innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see Not All Claims Previously Searched and/or Examined.

Examiners should review the FER to check whether the Australian independent claims, and any non-trivial features relating to the inventive concept in the dependent claims, have been searched. The following issues may arise and may result in the need for an additional search:

  • Where the FER indicates that claims have not been examined because they are too broad/not supported/not limited to technical features of the invention, and this reasoning is prima facie reasonable in light of the claims, examiners should consider whether a fair basis and/or full description objections are applicable. In these cases, examiners should also assess to what extent the search/examination conducted by the ISA or foreign office has covered the claims.
  • Where a FER states that certain claims are novel and inventive, examiners should validate this finding to confirm an appropriate search has been done; see Validation of Novelty and Inventive Step Findings.
  • Where claims have not been examined because of a lack of unity, and this is prima facie reasonable, examiners should refer to the FER for any relevant lack of unity explanation. Where the only FERs available are directed to later inventions rather than the first claimed invention, examiners should follow the procedures outlined in FERs and Lack of Unity.
  • Where claims have not been examined because of excluded subject matter, an appropriate search may not have been conducted and examiners should check for this.
  • Where, for any other reason, there are still claims remaining that have not been adequately searched or examined, or that differ substantially in scope from those previously searched or examined, examiners should check whether there is another FER (e.g. US or EP) that discusses these claims and use this if appropriate.

If any of the above issues arise and substantial additional searching is likely to be required, examiners should convene a three person team and consider whether, and to what extent, an additional search is warranted in accordance with the practice outlined in Additional Searching.