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2.22.4.1 Scope of the Consideration

Date Published

Note: Prior to 15 April 2013, the only grounds available for consideration during re-examination were novelty and inventive/innovative step. For re-examination reports issued on or after 15 April 2013, expanded grounds are available for consideration during re-examination.  This applies regardless of whether the report is an initial report, or a subsequent adverse report.


During re-examination, consideration is given to:

i. whether the specification does not comply with sec 40(2), sec 40(3) or sec 40(3A);

ii. whether the invention, so far as claimed in any claim:

  • is not novel; or
  • does not involve an inventive step or an innovative step, as applicable; or
  • is not useful; or
  • is not a manner of manufacture.

iii. whether the invention is not patentable under sec 18(2) or sec 18(3), as applicable.

Examiners should also note that prior use may be considered for novelty and inventive/innovative step purposes.


Consideration of Sec 40 and Usefulness

During re-examination, the sec 40 grounds to consider are the same as those considered during examination.  Usefulness should be considered as detailed below.

Examination Request Filed Before 15 April 2013

In this situation, the sec 40 issues to be considered during re-examination are:

  • full description, including best method of performance;
  • clarity and succinctness; and
  • fair basis.

Usefulness should be considered only in terms of whether the claimed invention achieves the promised benefit (see 2.9.3.4.1.1A Does the Invention Achieve the Promised Benefit?)

Innovation Patent Where Commissioner Decided Before 15 April 2013 to Examine the Patent

Refer to ‘Examination Request Filed Before 15 April 2013’ above.

Examination Request Filed On or After 15 April 2013

In this situation, the sec 40 issues to be considered during re-examination are:

  • clear enough and complete enough disclosure, including best method of performance;
  • clarity and succinctness;
  • support; and
  • omnibus claims.

Usefulness should be considered according to the procedures outlined in 2.9.3.4A Useful (Utility).

Innovation Patent Where Commissioner Had Not Decided Before 15 April 2013 to Examine the Patent

Refer to ‘Examination Request Filed On or After 15 April 2013’ above.

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