5.6.2.7 Report Dispatch, Correction of Report etc.

Also in this Chapter:

• 5.6.2.1 Request for Examination
• 5.6.2.2 Application in a state of lapse?
• 5.6.2.3 Extension of Time requested (s.223 actions)
• 5.6.2.4 Payment of fees
• 5.6.2.5 Translation of specifications (requirements for certification, poor translations)
• 5.6.2.6 Obtaining priority documents
• 5.6.2.8 Further Report Considerations
• 5.6.2.9 Convention applications

Key Legislation:

Patents Act:

• s223 Extensions of time  

Patents Regulations:

• reg 13.4 Prescribed period: acceptance of request and specification

Related Chapters:

• 7.11 Extensions of Time and Restoration of the Right of Priority.

On this page

• Overview
• Delay in receipt of the report:
  • Report Sent to Wrong Address
  • Report not Received
  • Report not Despatched
  • Correction of Reports.

Overview

The 12-month period for gaining acceptance runs from ‘the date of the first report’ (reg 13.4), that is, the date that appears on the report. The report is taken to have been given to the applicant on that date. There is no provision in either the Act or Regulations to withdraw a report and replace it with another report, or for the date of a report to be changed after issue.

A report issues when it is placed in the case file as a completed document (that is, with the document status of ‘FILED’) and cannot be withdrawn and replaced by a new report. Reports are subsequently uploaded into AusPat overnight and become visible on eDossier the following day.

Delay in receipt of the report

Where there has been a delay in the receipt of the report by the applicant or attorney, it may be possible to extend the time for acceptance. Any request for an extension of time should be referred to the supervising examiner, who will consult with Patent Oppositions.

In general, an extension of time is not allowed until it is needed, that is, an extension is not needed until the normal period for gaining acceptance is about to expire. An extension of time can also be allowed (without a formal request being made) where an application lapses due to expiry of the period for acceptance and there is clear evidence of Office error (see the scenarios discussed below).

In these circumstances, a case note should be added to the file and the supervising examiner informed of the situation. If the supervising examiner agrees that s223(1) is applicable, the relevant form at 7.11 Annex A - Section 223(1) Extension of Time for Acceptance File Note should be completed and the case referred to the Assistant General Manager (Oppositions). Further guidance on the treatment of extensions of time in accordance with s223 is provided in 7.11 Extensions of Time and Restoration of the Right of Priority.​​​​​​​

Report Sent to Wrong Address

Examiners should be careful to ensure that all reports are addressed correctly. If it is apparent that a report has been sent to the wrong address, then the report will stand, but the grounds to invoke the provisions of s223(1) will be regarded as established. CEG will forward a copy of the report to the correct address, together with a covering letter explaining the circumstances and advising the applicant or attorney that, if needed, an extension of time under s223(2) to the period prescribed in reg 13.4 for acceptance of the request and specification will be allowed, commensurate with the delay.

In these circumstances the applicant or attorney is not to be asked to supply a statutory declaration to corroborate that the report was not received.

Report not Received

There can be circumstances where the report was correctly addressed but the report has gone missing (likely lost in the mail). In these circumstances, the applicant or attorney is to be advised that an extension of time to gain acceptance may be sought under s223(2)(b) (circumstances beyond control), with a statutory declaration being required to establish that the report was not received at the correct address.

Report not Despatched

Where it is clear that an examination task was submitted, but the corresponding report not despatched (likely due to a system error), the report is regarded as issued on the date that it was dated.  A copy of the report should be despatched to the applicant or attorney (if they have not already obtained a copy from eDossier) together with a covering letter explaining the circumstances. The grounds to invoke the provisions of s223(1) will be regarded as established. The applicant or attorney should be advised that an extension of time under s223(1) will be allowed if it is not possible to gain acceptance in time.

Correction of Reports

Warning: Examination reports with the document status of ‘FILED’ MUST NOT be deleted from the PAMS Ecase. However, reports with the status of ‘DRAFT’ may be deleted, as these are working documents that have not been issued.

Where examiners become aware that a completed report with the document status of ‘FILED’ contains a substantial error, for example if an objection has been overlooked, or an objection is recognised as wrongly taken, the appropriate corrective action is to immediately issue a further report (that is, second, third etc).* The report should also include an apology as appropriate.

Where examiners are aware of other minor inconsistencies or omissions in a completed report, they should consult a senior examiner as to whether it is necessary to issue a further report, or if a phone call to the applicant or attorney will suffice.

See also PERP codes [A80] and [A81] for cases where correction of a report is required as a result of quality review.  Further information on issuing corrective actions as a result of a quality review Finding can be found in the Quality System and Security Manual.

*Note that when issuing the further report, examiners should ensure that the report is correctly numbered.