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2.13 Annex A - Procedural Outline for Full Examination of a Standard Patent Application

Date Published

First Report

Note: The order of these steps is not mandatory and may be varied as appropriate.


1.

Determine the type of application as procedures may vary, e.g. divisional, additional, national phase etc.

2.10 Divisional Applications

2.19 Patents of Addition

2.20 National Phase Applications

2.

Check that the application is in force if the date of the patent is more than 4 years ago.

2.13.2.1 Forms of Lapsing

3.

Check that a request for examination has been made.

2.13.4. Requests for Examination

4.

Check the case file for any matters pertaining to examination or any other outstanding actions.

2.13.1 Initial Considerations

5.

Check the patent request (where applicable):

  • proper authorisation

  • nominated person a legal person

  • title

  • address for service.

2.6.2 Patent Requests

2.21.3.1 General Requirements

2.21.3.7 Patent Requests and Entitlement

6.

Check entitlement.

2.6.3 Entitlement

2.20.3.2 Entitlement

2.21.3.7 Patent Requests and  Entitlement

7.

If a Convention application, check:

  • prescribed foreign country

  • application in time

  • details in accord with the patent request/notice of entitlement

  • priority documents (where applicable)

    • filed in time

    • first made in prescribed foreign country

    • certified copy

    • translation.

2.21.1 Introduction

2.21.2 Convention Countries

2.21.3 Making Convention Applications

8.

Check to see whether any amendments have already been filed. Examination includes the consideration of any amendments filed in anticipation of an examination report.

2.13.7.1 Amendments in Anticipation

2.23.2.7 Priority in Reporting on Voluntary Requests to Amend

9.

Check formal requirements.

2.13.6 Matters of Form

10.

Read the claims and, if necessary, the description to get a broad understanding of the scope of the invention:

  • determine whether the claims define a manner of manufacture, or are objectionable under sec 50(1).

2.9.2 Patentable Subject Matter (Manner of Manufacture)

2.9.3.2 Food or Medicines, Being Mere Admixtures

11.

Read the complete specification and determine:

  • what is the admitted prior art

  • what is the problem to be overcome

  • whether it meets the requirements of sec 40(2).

2.11 Section 40 – Specifications

2.11.2.2 Rules of Construction

12.

Construe the claims, determine their scope and note:

  • whether they define one invention

  • whether they meet the requirements of sec 40(3) and sec 40(3A)

2.11.4 Claims Define the Invention

2.11.2.2 Rules of Construction

2.11.8 Claims Relate to One Invention Only - Lack of Unity

13.

Review classification.

2.13.8 Review of Classification

14.

Determine the search strategy, if necessary. Check for FERs.


4.1 Searching

2.1.9.2 FER Retrieval

2.1 Annex A - Open Patent Services (OPS) FER Process

5.19 Citation Manager

2.1.9 Guidelines for Using IPRPI/IPRPIIs and Other Foreign Examination Reports (FERs) in Examination

15.

Conduct the search, if necessary,  using appropriate search tools.


4.1 Searching

16.

When conducting the search, or reviewing FERs, consider:

  • novelty, including "whole of contents"

  • inventive step and other sec 18 matters.

2.4 Novelty

2.5 Inventive Step

17.

Check if any material has been filed under sec 27.

2.13.11 Notices Under Section 27

18.

Check for multiple applications claiming the same invention and obtain case files of these.

2.18 Multiple Applications (Sections 64(2) and 101B)

19.

Complete the Search Information Statement, if necessary.

4.1.6 Recording the Search Details

4.1 Annex D – Search Information Statement

2.1.7.2 Identifying Citations

20.

Prepare the report, ensuring that all important objections are raised. Submit the report for supervision, where necessary.

2.1.5 Inconsistent or Piecemeal Examination

2.1.6 Examination and Report Requirements

2.1.7.2 Identifying Citations​​​​​​​


Further Reports

Adverse

1.

Check that the application is in force.

2.13.2.3 Lapsing at Further Report

2.

Consider whether the amendments filed, and/or the arguments in rebuttal, overcome the objections:

  • determine whether the amendments are allowable

  • consider form of the amendment.

2.1.8 Furthers

2.23.8 Allowability Under Section 102(1)

2.23.3.8 Form Amendments Should Take

3.

Check for new objections. Check for FERs.

2.1.9.2 FER Retrieval

2.1 Annex A - Open Patent Services (OPS) FER Process

2.1.9 Guidelines for Using IPRPI/IPRPIIs and Other Foreign Examination Reports (FERs) in Examination

4.

Check if any material has been filed under sec 27.

2.13.11 Notices Under Section 27

5.

Maintain existing objections where appropriate.

2.1.8 Furthers

2.13.5 Stringency of Tests During Examination

2.1.5 Inconsistent or Piecemeal Examination

2.1.7.2 Identifying Citations

6.

Submit third and subsequent reports for review by the supervising examiner.


2.1.8 Furthers

Clear

1.

Check that the application is in force.

2.13.2.3 Lapsing at Further Report

2.

Accept the case if the necessary requirements are met.

2.15 Acceptance of Standard Patent Applications

3.

At the final report stage:

  • review classification

  • check that the Search Information Statement has been correctly completed, if necessary

  • complete acceptance task

  • submit for supervision if necessary.

2.13.8 Review of Classification

4.1.6 Recording the Search Details

4.1 Annex D – Search Information Statement

2.15.4 Clear Reports

5.10.19. Acceptance​​​​​​​

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