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2.1.4A Restriction of the Extent of the Report

Date Published

Note: The information in this part only applies to:

•  standard patent applications with an examination request filed on or after 15 April 2013.
•  innovation patents with an examination request filed on or after 15 April 2013.
•  innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.1.4 Restriction of the Extent of the Report.

Examiners may find it necessary to restrict their report, and reserve opinion on certain aspects, where deficiencies in the specification make it impractical to issue a comprehensive report.  

Situations where restriction of the report may be justified are given below.  This list is not exhaustive and there may be other circumstances where it is impractical to issue a comprehensive report due to deficiencies in the specification.

Note: Where the extent of the report is restricted in some manner, a statement to this effect must be included in the report. The statement 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.


Invention Cannot be Determined From the Specification

Where the specification is drafted in such a way that it is impossible to determine from the specification as a whole what the invention is, an objection should be taken that the specification does not disclose the invention in a clear enough and complete enough manner, because it is not possible to determine the features of the invention from the specification as a whole.  Examiners may reserve opinion with regard to the requirements that the claims define the invention and are supported by the matter disclosed.  

Claims of Indeterminate Scope

Where the claims are drafted in such a way that it is not possible to determine their scope in any meaningful way, and it is also not possible to determine what the invention is, examiners may defer the search and reserve their opinion (see 4.1.4.2.4 Reserving the Search). However, where the invention can be determined from the description, the search should be conducted in respect of that subject matter, with a note included in the report indicating the subject matter searched.

Lack of Unity

Where the claims define more than one invention requiring additional searches, examiners should follow the procedures outlined in 2.1.6.2.4 Lack of Unity and 4.1.4.2.4 Reserving the Search.

Manner of Manufacture Issues

When the invention claimed is clearly not in respect of a manner of manufacture and it is not readily apparent what subject matter might reasonably be expected to be claimed, taking into account the contents of the description, drawings, graphics and photographs and the common general knowledge in the relevant technical field, the procedures outlined in 4.1.4.2.4 Reserving the Search should be followed.

Incorporation of New Matter

Where there has been new matter incorporated, such that amended specification claims or discloses matter that extends beyond that disclosed in the specification as filed, examiners should refer to 2.13.6 Matters of Form and 2.23.8.2A Section 102(1) Examination Practice, Reporting on Amendments Not Allowable Under Section 102(1).

Innovation Patent With More Than Five Claims

Where an innovation patent has more than 5 claims, and not all claims can be examined with negligible additional effort, examiners should object that the innovation patent does not comply with sec 40(2)(c) and reserve opinion on all other examination issues (see 2.31.4.4 Ground (1): Section 40).

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