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2.1.8 Furthers

Date Published

Further reports must be comprehensive. If a statement of proposed amendments has been filed in response to an examination report, examiners are to report upon the specification as proposed to be amended and report whether those amendments are not allowable.

Note: Where proposed amendments are not allowable, examiners should refer to Section 102(1) Examination Practice, Reporting on Amendments Not Allowable Under Section 102(1).

Examiners should ensure that the further report includes:

  • objections raised in the previous report which have not been fully overcome by the proposed amendments and/or submissions.  This may be done by reference to an earlier report provided the outstanding issues are made clear.
  • new objections which have arisen as a result of the amendments made to the specification.  

At further report stage, more detail may be required in the report to specifically address arguments or issues raised by the applicant. Where an objection is maintained in the face of meaningful submissions, the wording of the report must be such that the applicant is in no doubt that a legitimate point made in the submissions has been taken into account.

Where a response indicates that the applicant’s understanding of any issue, such as the scope of the claims or of a particular term, differs from that of the examiner, it will be necessary to discuss these issues in greater depth when maintaining an objection.

Examiners are not expected to reassess previous objections that have not been addressed in the applicant’s response. Therefore, dependent claims that were dealt with in a general manner in an earlier report, and which have not been addressed in the applicant’s response, do not have to be investigated further, i.e. a general objection may still apply to those dependent claims.

Where amendments are not proposed in response to an objection, an argument in rebuttal may have the effect of making examiners doubtful of the applicability of the objection where previously they had no doubts. In such circumstances, whether or not to maintain the objection should be considered carefully using the relevant test (see 2.13.5 Stringency of Tests During Examination).  An examiner unsure of the correct course of action should refer the matter to a senior examiner in the first instance (see also 2.1.1 Introduction).

Additional searching may also be required at further report stage depending on the proposed amendments; see Additional Searching.

Note: Refer to Identifying Citations for discussion of best practice in identifying citations in further reports.

Third and Subsequent Adverse Reports; Withdrawing Objections After Two Adverse Reports

It is important that objections are raised and maintained appropriately. To this end:

  • All third and subsequent adverse reports (including reports on voluntary requests to amend under sec 104) are reviewed by a supervising examiner. A statement to this effect must be included in each third and subsequent adverse report (see PERP code [P90]).
    ​​​​​​​This function can be delegated to senior examiners where the supervising examiner considers it appropriate.
  • Where an issue remains after three adverse reports and without substantial amendments being proposed, Patent Oppositions should be consulted on the further progress of the case, including whether to set the matter for hearing with the intent to refuse the application.
  • Where an objection has been raised and maintained for 2 reports and the examiner believes, on the basis of the applicant’s submissions alone, or submissions with insubstantial amendments, that the objection should be abandoned, then a supervising examiner or delegated senior examiner will need to be consulted before the objection can be withdrawn. This is intended to ensure that objections are not withdrawn without sufficient justification. However, where the examiner considers that the proposed amendments fully address the grounds of objection, no further consultation is required.

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