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2.1.3 Flexible Approach for Complex Cases

Date Published

There is no single best practice for examining and reporting on complex cases.  The most important attribute is retaining flexibility in examining such cases on their individual merits and recognising that different approaches may achieve similar outcomes. Consultation with senior examiners and supervising examiners is also recommended in these situations.  

Cases With Large Numbers of Claims, Very Broad or Divergent Claims, or Multiply Dependent Claims

For large numbers of claims, examiners should consider each independent claim and broadly object to their dependent claims as appropriate.  Multiple independent claims can be grouped where possible and considered together.

Where there are many independent claims with different combinations of features, it is often not clear which features define the actual invention.  If the applicant is likely to amend the claims to clarify the invention, substantial examination may be reserved for further report stages.  Additional searching may also be required at further report once the claims and/or description have been amended or reassessed in view of applicant submissions; see Additional Searching.

In extreme cases, examiners can reserve examination and report on all issues until the applicant has clarified the invention.  This should be a “last resort” approach (for example, in the situation where there are many independent claims as discussed above) and should be taken in consultation with a senior examiner or supervising examiner.  Where the report is restricted in some manner, a note to this effect must be included in the report.  The note should include the reasons for restricting the report, together with the advice that opinion in respect of those matters not covered by the report is reserved.

Examiners should note that the report may also be restricted in other circumstances; see 2.1.4 Restriction of the Extent of the Report.

Multiple Citations

Where multiple citations are available (e.g. from one or more FERs), examiners should concentrate on the “best citation(s)” or, if all citations are of close or equivalent disclosure and there is no “best citation”, on one of the citations, and can refer to a representative selection of the other relevant citations in a more general way. See also:

Multiple FERs

Examiners should make appropriate use of FERs and select the most relevant FER at each report stage, but will need to reconsider other FERs (including updates) at later report stages when the invention is clarified and/or amendments are made.  Where there are many potentially relevant FERs, examiners should concentrate on any FER that is valid, highly relevant and deals with all key issues.  In such cases it will generally not be necessary to consider other FERs in detail.  However, examiners should remember to consider other FERs when their understanding of the claims changes, either as a result of amendments or in response to submissions from the applicant or attorney.  See also:

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