Note:

1. Where citations are identified from a Foreign Search Report (FSR) or Foreign Examination Report (FER) and the citation details are downloaded to PAMS/DocGen using Open Patent Services (OPS), there is no requirement to check, alter or update either the citation details or format of the citation details as downloaded. These citation details may be used “as is”. However, where examiners become aware of an error in the data (e.g. transposed numbers, spelling errors in a name etc), they should correct such errors when identified.

2. Citation details downloaded through OPS will automatically populate the source of the citation.

See also 2.1.9.2 FER Retrieval; 5.19 Citation Manager and 2.1.7.2 Identifying Citations.

Objections must only be based on a FER to the extent that the FER reasoning is clearly applicable under Australian law. If the FER reasoning is not applicable under Australian law, it should not be used or referred to and examiners will need to draft their objection independently for the Australian context.

The report should identify the relevant claim numbers, give the statutory basis for the objection and refer to the FER for explanation (see also 2.1.9.4.2 Identifying Citations, Multiple Citations). The location of the relevant passage(s) within the FER must also be provided if the FER is excessively long (e.g. greater than 5 pages) and/or the location is not readily evident. Where any of the citations raised in the FER are relied upon, examiners are to list these documents in the report.

When drafting objections relying on the reasoning in a FER, examiners must not simply reference the text of a FER. It is not sufficient to merely indicate that the objection of the FER is equally applicable under Australian law.

Thus in practice examiners should:

rely on the FER reasoning to the extent that it is clearly applicable under Australian law and, where appropriate, modify the FER reasoning so that it is consistent with Australian law; OR
if the FER is consistent with Australian law, add additional information to the objection to demonstrate that they have identified important aspects of the invention (see examples below).

Note: When drafting objections relying on the reasoning in a FER, particular care should be taken to ensure the clarity of such reasoning when it is extended from an independent claim to the corresponding dependent claims.

Where appropriate, referring to the FER is more efficient than rewriting essentially identical objections. Examiners should not do a full cut and paste of text from the FER. Where parts of the text are transcribed from a FER into an examiner’s report, these should be included in quotation marks. Where the FER lacks sufficient detail it will generally be necessary to include additional explanation.

Where there are slight differences between the FER claims and those under consideration, examiners may find that the differences are not significant enough to warrant redrafting of the text of the FER. However, where the validity and/or relevance of the report referred to is not immediately evident, further explanation may be required. In this case, additional explanation should be provided in the objection to clearly indicate the nature and extent of the differences between the respective claim sets. Specific examples where additional information can be provided to an objection include, but are not limited to:

Specific discussion in the report of a key feature.
Identification of a better citation reference for a key feature.
Further explanation of an aspect of claim construction.
Discussing a difference between the foreign and Australian claims and why this difference is immaterial or explaining claim concordances.
Discussing a key difference between the foreign and Australian law and how Australian law applies.
A statement as to why a particular claim may be novel and inventive.

See also 6.8.5 Based on FERs (Novelty and Inventive Step) for examples.

Note: Where a FER has objected in a general manner to dependent claims, examiners must identify at least some of the features defined in those claims and indicate whether these features lack novelty, or lack an inventive step using, for example, arguments of design choice and common general knowledge, as outlined in 2.1.6.2.6 Novelty and Inventive Step (Discussion of Independent and Dependent Claims). See also PERP codes [F750A], [F750B] and [F751] – [F755].

Same Citation Discussed by Multiple FERs

Where more than one FER discusses the same citation, in relation to the same claims, examiners may decide which FER they consider to contain the most convincing reasoning and make reference to only that FER. If it is found that the different FERs discuss the same document, but in relation to differing claims within the same claim set, then examiners should confirm the findings of novelty and inventive step (see 2.1.9.3.3 Validation of Novelty and Inventive Step Findings) to determine if one or more of the FERs should be separately referred to within the objections, or an original opinion be formulated.