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Date Published

Note: Examiners should use their knowledge and judgement on a case by case basis to determine what reliance can be reasonably placed upon a FER.  Examiners should be particularly mindful that where both novelty and inventive step findings are confirmed as positive for claims, such claims will likely form the basis for any future grant.

Initially examiners should confirm any positive or negative novelty/inventive step findings in a FER for the independent claims.  The check should confirm that the reasoning in the FER is both accurate with regard to the citation and relevant to the claims under consideration in accordance with Australian law. Where a foreign granted claim set is available, then the novelty and inventiveness is to be confirmed by the comparison of the granted claims against the most relevant prior art identified during prosecution of the foreign application.

When any positive novelty and/or inventive step findings for independent claims are confirmed, examiners may accept as correct any corresponding positive novel and/or inventive step findings for dependent claims that fall within the scope of the independent claims.

Where negative novelty and/or inventive step findings for independent claims are confirmed, examiners may:

  • accept any corresponding negative novelty and/or inventive step findings for the dependent claims.  Note, however, that negative inventive step findings for the dependent claims could be based on a combination of documents, which may not be applicable under Australian law.  In these situations examiners will need to determine whether a separate objection is warranted following the principles in Novelty and Inventive Step for dealing with dependent claims.
  • ensure, by diligent consideration of the relevant claims and citations, and a review of the search carried out by the foreign office, that any findings where both novelty and inventive step are positive for the dependent claims are correct.  It is not necessary to confirm any findings where only one of novelty or inventive step is positive for dependent claims

Where the FER is a “fast track” EP IPER/IPRPI/IPRPII that refers only to the X and Y documents cited in the ISR, examiners should use the ISR to identify the location of features of the invention within the indicated citation(s). A clear distinction between claims that have prior art cited against them and those that do not may assist in the identification of novel and/or inventive features where explanations are lacking.

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