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Date Published

Once the FERs have been sourced, examiners should check the respective claim sets to ensure that the claims under consideration in the AU application and the FER are the same or similar. Amendments are frequently made to the various family members before and during prosecution and therefore it is important that the claims which are the subject of the FER are the same as or similar to the Australian claims under consideration. Examiners should be mindful of subsequent FERs/applicant’s arguments available in the foreign office proceedings that may render the documents cited in an earlier FER redundant.

Where some claims have not been previously searched and/or examined these will need to be considered separately - see Not All Claims Previously Searched and/or Examined.

If any differences in wording exist between the claim sets, consideration should be given to the nature of the differences and resultant scope of the claims, in order to determine the extent to which the FER can be relied upon. Claim numbering and dependency should also be checked to ensure there is a clear correlation between what is being addressed in the FER and the claims under consideration.

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