Initial Report

Date Published

Re-examination will only be instigated at the discretion of the Commissioner if an adverse report is to issue. Consequently, the report will only refer to documents which give rise to an objection.

In contrast, where the patentee or a third party requests re-examination, the Commissioner must re-examine the patent. In these circumstances, the report will address all documents provided in the request and should include positive or negative statements regarding each claim. (It is possible that the report will be positive in respect of every claim). However, examiners need only report in detail on those documents found to be relevant, or discussed as being relevant by the person making the request. Any documents not considered to be relevant and not discussed as being relevant by the person making the request may be grouped together and addressed in terms of a positive statement.

A re-examination report should state that the application or patent has been re-examined, outline the findings and, in the case of an adverse report, give the applicant or patentee a period of 2 months from the date of the report to respond.

The initial re-examination report must take into account any information or submissions on file, including any provided prior to acceptance, or in evidence filed during opposition. Areas of doubt should be resolved, wherever possible, before issuing a report. The report must give sufficient detail of the nature of the objection and the examiner's consideration of any available information to enable the applicant or patentee to address the issues in as few responses as possible. An adverse report should explicitly identify each claim that is rendered either not novel or lacking an inventive/innovative step. The standard required for an adverse report is the same as the third report standard.

All re-examination reports, both adverse and non-adverse, must be supervised by a senior examiner (see Supervision of Reports).  The practice outlined in 2.22.7 Copy of Report on Re-Examination should also be followed.

Note: For re-examination of patent applications prior to grant, examiners should ensure that a bar to grant is in place by completing the 'Deferment of Grant Details' box in the 'Examination Details' screen in PAMS.