2.1.1 Introduction

Date Published

Examination of an application must be conducted efficiently to facilitate clear and informative reporting which provides detail at the most effective stage of the examination process. Each report must be as comprehensive as possible in the circumstances of each individual case. At each stage examiners should focus on the key issues of invalidity, i.e. sec 40 and sec 18 issues, which affect prosecution of the case. This has been determined to be the most effective way to facilitate progress of an application.

The most effective stage is the earliest point during the prosecution of an application when examiners are able to identify these key issues. Most often this will be the point at which the scope of monopoly sought, or the alleged inventive concept, can be reasonably identified. In complex cases, it is often difficult to determine where the actual invention resides at first report and it is only at further reports that the key issues of invalidity can be properly understood. Factors which determine the most effective stage and the level of detail required in a report include the number of claims, very broad or divergent claims, or multiply dependent claims. Other factors which need to be considered are the complexity and number of citations and/or foreign examination reports (FERs), and where the technology is particularly difficult.

This approach allows higher levels of detail to be invested in issues and in claims that are in dispute, or critical to progressing the application.  It also recognises that once these major issues are addressed, minor or peripheral issues will often be overcome at the same time.  

At each stage of examination, the key issues of invalidity will primarily require a detailed consideration of the independent claims, with a more generalised approach for the dependent claims. The level of attention paid to dependent claims is a matter of judgement on the part of examiners.  

While this approach allows flexibility in dealing with complex cases and those where it is difficult to clearly determine what the claimed invention is likely to be after amendment, or what is the inventive concept disclosed, examiners are still required to consider all key invalidity issues and report on those that may reasonably be determined from the application.

The same general approach also applies to further reports. Ideally, amendments and/or submissions will resolve the issues but this is not always the case. If the issues raised in the previous report have not been resolved by amendments or submissions, or new issues have arisen as a result of either, then a further report addressing the new or continuing issues will be required.  At later report stages issues generally become narrower and require deeper analysis and examiners will often need to provide further detail in their reports to cover issues in dispute. However, it will generally not be necessary to provide extra detail for issues raised at an earlier report which have not been challenged or overcome in the applicant’s response.

In both complex cases and at further report stages, more detailed argument is frequently required and clarity of reasoning is particularly important. These considerations are also crucial when engaging in discussions with the applicant via phone.

Where such complexities arise and the examiner is having difficulty determining a suitable approach, or where, at later report stage, progress of the remaining matters stalls, examiners should, in the first instance, refer the case to a senior examiner for advice. Depending on the nature of the issue and whether the problem persists, the matter should be escalated to the supervising examiner (see also 2.1.3 Flexible Approach for Complex Cases).