Subsequent Adverse Reports

Date Published

If an applicant or patentee does not respond to a re-examination report, the Commissioner is likely to set the matter for hearing with a view to refuse the application or revoke the patent  (see 2.22.8 Refusal to Grant a Patent Following Re-Examination and 2.22.9 Revocation of Patent Following Re-Examination). However, in some circumstances the Commissioner may choose to issue a subsequent re-examination report, rather than head directly to refusal or revocation. These include:

  • where an applicant or patentee has made a reasonable attempt to respond to the initial re-examination report (either by way of submissions or proposed amendments), but where there are still some issues outstanding.  In this situation another re-examination report can be issued.  

    Where a subsequent re-examination report is based on a sec 99 or sec 101H statement by the applicant or patentee that was not accompanied by a request for leave to amend the complete specification, the report should address all the arguments raised in the statement.

    Where a subsequent re-examination report is to be issued and the applicant or patentee has requested leave to amend the complete specification, then the practice of Proposed Amendments are Allowable or Proposed Amendments are not Allowable should be followed as appropriate.

  • where an applicant or patentee advises the Commissioner in writing that they intend to prosecute the application and can provide satisfactory reasons why they have been unable to meet the 2 month response deadline, despite taking all reasonable steps to do so.

    Consequential requests for further time to respond to a re-examination report will be considered by Patent Oppositions. If appropriate, Patent Oppositions will issue another re-examination report with a new 2 month response time.

If subsequent re-examination reports are issued, similar considerations as outlined in Initial Report apply.  In particular, the report must be supervised by a senior examiner or supervising examiner depending on the circumstances and Patent Oppositions consulted before the report is issued (see Supervision of Reports).

Note: The timeframe for actioning a response to a re-examination report is within 8 weeks from the date of receiving the response (in accordance with the Customer Service Charter Timeliness Guidelines ).

Note:  There is no specific legislative provision for the Commissioner to issue further re-examination reports in response to a submission, or to extend the time to respond to a re-examination report (except under sec 223).  Instead, the subsequent re-examination report is a completely new re-examination action, re-starting the re-examination process and with its own 2 month response deadline.

This subsequent re-examination report provides the applicant or patentee with another opportunity to overcome the objections raised in the previous re-examination report. However, it is only issued on the understanding that the applicant or patentee is genuinely attempting to address the objections as expeditiously as possible.

Re-examination is intended as an efficient legislative means to dispose of invalid claims. It is inconsistent with this scheme to have protracted debates on the same issues over multiple re-examination reports.

However, issuing subsequent re-examination reports would not be appropriate in the following situations:

  • in the case of re-examination directed by a prescribed court (sec 97(3) and sec 101K(1)); and
  • in the case of re-examination during an opposition.  In this circumstance, the Assistant General Manager (OEP) should be consulted prior to issuing a subsequent re-examination report.