5.6.13.3 Completion of re-examination

Also in this Chapter:

• 5.6.13.1 Commencing re-examination
• 5.6.13.2 Re-examination process
• 5.6.13.4 Refusal to grant or revocation following re-examination

Key Legislation:

Patents Act:

• s61 Grant of standard patent
• s97(1) Re-examination of complete specifications
• s99 Statement by applicant or patentee
• s101H Patentee statements 
• s104 Amendments by applicants and patentees

Patents Regulations:

• reg 9.5 Completion of re-examination​​​​​​​

On this page

• Completion of re-examination in an opposition proceeding
• Conclusion of re-examination where re-examination occurs in circumstances other than in the context of opposition proceedings.

Completion of re-examination in an opposition proceeding

Regulation 9.5 defines when re-examination is "completed" in relation to re-examination under s97(1). In practice, this regulation is only relevant when re-examination occurs in the context of an opposition proceeding.

Where re-examination is "completed" according to reg 9.5, some or all of the issues raised in the re-examination report may remain outstanding. Completion will either result in a further re-examination action being instigated, or in the opposition re-commencing. Oppositions should be consulted before taking any further action.

Conclusion of re-examination where re-examination occurs in circumstances other than in the context of opposition proceedings

The legislation does not define exactly when re-examination has been "completed" apart from re-examination in the context of opposition proceedings. Where re-examination occurs in circumstances other than in the context of opposition proceedings, the re-examination action per se is concluded after issuing a re-examination report and receiving a statement under s99 or s101H.

Where issues raised in a re-examination report are not overcome, the Commissioner has the following options:

• set the matter for refusal or revocation (see 5.6.13.4 Refusal to grant or revocation following re-examination);
• issue subsequent re-examination reports, that is, commence a further re-examination action (see 5.6.13.2 Re-examination process); or
• issue an adverse report on the allowability of amendments (see 5.6.13.2 Re-examination process).

Where the issues raised in the re-examination report are overcome by the statement under s99 (in the case of a standard patent) or s101H (in the case of an innovation patent) and there are no proposed amendments, examiners are to write to the applicant or patentee and inform them that the statement has addressed all of the issues raised in the re-examination report and that the re-examination has now concluded.  

Where there are proposed amendments and these do not give rise to any further issues, including non-allowability of amendments, examiners are to write to the applicant or patentee informing them that once the amendments have been allowed, the objections raised in the re-examination report will be overcome. After the amendments have been allowed, Oppositions will inform the applicant or patentee that the issues raised in the re-examination report have been overcome, and the re-examination has concluded.

In the case of an application for a standard patent, examiners are to inform the applicant that the patent will be granted in due course pursuant to s61. This advice is as a matter of courtesy only and is not a legislative requirement.

Examiners can refer to 5.6.13.2 Re-examination process for processing of the amendments. 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.