Quality

Quality Management at IP Australia

Quality Policy

1.1 International Searching

1.1.3 Search Allocation and Preliminary Classification

1.1.4 Unity of Invention

1.1.5 Abstract and Title

1.1.7.1 Claim Interpretation According to the PCT Guidelines

1.1.7.2 Broad Claims

1.1.8 Search Strategy

1.1.12 Search Report and Notification Form Completion

1.1.19 Annexes

1.2 International Type Searching

1.3 International Examination

1.3.4 Top-up Search

1.3.5 First IPE action

1.3.6 Response to Opinion

1.3.9 General Considerations

1.3.10 Annexes

Annex A Sub-Annexes

1.4 Fiji Applications

1.5 Thai Applications

1.6 WIPO Searches

2. National

2.1 General Approach to Examination

2.1.7 Citations

2.1.9.4 FERs and Report Formulation

Annex A - Open Patent Services (OPS) FER Process

2.2 Other Examination Considerations

2.2.8 Summary of IP Reform Changes

2.3 Definitions

2.4 Novelty

2.4.4 Relevant Prior Art

2.4.5 Construing the Citation

2.4.6 Level of Disclosure Required

2.4.12 Novelty - Some Specific Examples

2.4.12.1 Chemical Compounds

2.4.12.2 Range of Variables

2.4.12.2.1 Examples Needed for Clear and Unmistakable Directions

2.5 Inventive Step

2.5.1 Overview

2.5.2 Identifying the Relevant Facts

2.5.2.1 Common General Knowledge

2.5.3 Tests for Inventive Step

2.5.3.4 Special Inducements, Obvious Selections

2.5.3.4.1 Examples of Special Inducement

2.5.3.10 Indicators of Inventive Step

2.5.4 Inventive Step - Some Specific Examples

2.5.4.1 Chemical Situations

2.6 Applicants and Nominated Persons, Patent Requests, Entitlement

2.6.1 Applicants and Nominated Persons

2.6.2 Patent Requests

2.6.3 Entitlement

2.6.4 Changing the Applicant or Nominated Person

2.7 Micro-Organisms and Other Life Forms

2.7.3 The Budapest Treaty

2.7.4 The Deposit Requirements

2.7.4.3 Deposit Receipt and Notice of Entitlement to Rely on Deposit

2.7.4.3.1 Contents of the Receipt

2.7.5 Amendments to Insert Section 6(c) Information and Extensions of Time Therefor

2.7.6 Release of a Sample of Deposit

2.7.7 Deposit Requirements Cease to be Satisfied

Annexes

2.8 Abstracts

2.9 Patentability Issues

2.9.2.17 New Uses

2.9.2.18 Ethics and Social Policy

2.9.3 Other Issues

2.9.3.4.1A Assessing the Claims for Lack of Usefulness

2.9.3.5 Human Beings and Biological Processes for Their Generation

2.9.3.5.1 Stem Cells

2.9 Annex A - History of Manner of Manufacture

2.10 Divisional Applications (Sections 79B and 79C)

2.10.9.1 Supervision of Divisional Applications with Great Grandparent or Earlier Ancestors

2.11 Section 40 - Specifications

2.11.2.1 The Addressee

2.11.2.2 Rules of Construction

2.11.2.3 Construction of Claims

2.11.2.4 What is the Invention?

2.11.2.4A What is the Invention?

2.11.3 Full Description, Best Method

2.11.3A Clear Enough and Complete Enough Disclosure

2.11.7A Support for the Claims

2.11.7.1A Principles for Examination

2.11.7.1.1A Contribution to the Art

2.11.9.1 Consistency of Title in the Documents

2.12 Priority Dates and Filing Dates

2.12.1 Priority Dates

2.12.2 Filing Dates

2.13 Examination

2.13.5 Stringency of Tests During Examination

2.13.15.5 Opinion

Annexes

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

2.19 Patents of Addition (Chapter 7)

2.19.1 Applications for Patents of Addition

2.19.2 Examination Procedure

2.20 National Phase Applications

2.20.1 Introduction

2.20.4 Complete Specification in a Foreign Language

2.20.5 Priority Considerations

2.20.10.1 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination

2.21 Convention Applications

2.21.3 Making Convention Applications

2.22 Re-Examination

2.22.4 Re-Examination Consideration

2.22.5 Re-Examination Report

2.22.6 Completion of Re-Examination Process

2.22.9 Revocation of Patent Following Re-examination

2.23 Amendments

2.23.3 Formalities

2.23.4 Fees

2.23.5 Granting Leave to Amend/Allowing the Amendments

2.23.8A Allowability Under Section 102(1)

2.23.9 Allowability Under Section 102(2) etc

2.23.10 "Clerical Error" and "Obvious Mistake"

2.23.11 Amendments After the Grant of a Patent

2.23.12 Other Allowability Issues Concerning Amendments to Complete Specifications

2.23.13 Amendment of a Patent Request or of Other Filed Documents

2.23.14 Amendments During Section 59 Opposition and Section 101M Opposition Proceedings

2.23.15 Opposition to Amendments

2.24 Requesting and Directing Examination, Withdrawal, Lapsing, Extension of Term

2.24.1 Requesting and Directing Examination

2.24.2 Withdrawal of Applications (Section 141, Regulation 13.1A)

2.24.2.2.1 Reversing Withdrawal of an Application

2.24.3 Lapsing of an Application

2.25 The Register of Patents (Chapter 19)

2.26 Employees, Delegations, Administration

2.26.1 Restrictions on Patent Office Staff (Sections 182-185)

2.26.4.1 Statutory Provisions

2.26.4.2 Types of Delegations Made by the Commissioner

2.26.5 Secret Cases

2.27 Payment of Fees (Section 227)

2.28 Transitional and Savings Provisions

2.29 Formalities and Forms

2.30 Patent Deed

2.30.1 Sealing of Duplicate Patent

2.31 Innovation Patents

2.31.1 Features of the System

2.31.2 Types of Innovation Patent Application

2.31.3 Formalities Check for Innovation Patents

2.31.4 Examination

2.31.4.5.4A Innovative Step

3. Oppositions, Disputes and Extensions

3.2.1 Section 59 - Opposition to Grant of a Standard Patent

3.2.2 Section 101M - Opposition to an Innovation Patent

3.2.3 Section 75(1) - Opposition to an Extension of Term of a Pharmaceutical Patent

3.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document

3.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)

3.2.6 Reg 22.21(4) - Opposition to Grant of a Licence

3.2.7 Sections 17 & 32 - Disputes Between Applicants and Co-Owners

3.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A

3.3 Directions

3.3.1 Directions in Opposition Proceedings

3.3.2 Directions that an Application Proceed in Different Name(s) - Section 113

3.4 Opposition Documents - Requirements and Amendments

3.5 Evidence

3.5.1 Presentation of Evidence

3.5.3.1 Further Evidence

3.6 Production of Documents, Summonsing Witnesses

3.7 Withdrawal and Dismissal of an Opposition

3.7.1 Withdrawal of an Opposition

3.7.2 Dismissal of an Opposition

3.7.3 Withdrawal of an Opposed Application

3.8 Hearings and Decisions

3.8.1 Setting Down Hearings

3.8.2 Hearings Procedure

3.8.3 Ex Parte Hearings

3.8.4 Natural Justice and Bias

3.8.5 Principles of Conduct

3.8.6 Decisions

3.8.9 Quality

3.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations

3.9 Costs

3.10 The Register of Patents

3.10.3 Amendment of the Register

3.11 Extensions of Time and Restoration of the Right of Priority

3.11.1 Extensions of Time - Section 223

3.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control

3.11.1.4 Subsection 223(2A) - Despite Due Care

3.11.1.4.1 Filing a Request under Subsection 223(2A)

3.11.2 Extensions of Time - Reg 5.9

3.11.2.2.1 Application of Regulation 5.9

3.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)

3.11.4 Restoration of the Right of Priority under the PCT

3.12 Extension of Term of Standard Patents Relating to Pharmaceutical Substances

3.12.1 Section 70 Considerations

3.12.2 Applying for an Extension of Term

3.12.3 Processing an Application for an Extension of Term

3.12.3.3.1 Renewal Fees

3.12.3.4 Refusal of Application for Extension of Term

3.13 Documents not OPI - Orders for Inspection

3.14 Appeals, AAT and Judicial Review, Other Court Actions Involving the Commissioner, Section 105 Amendments

3.15 Computerised Decisions

4.1 Searching

4.1.4 Development of the Search Strategy

4.1.4.3 Search Area

4.1.4.3.3 Non-Patent Literature

4.1.5 Conducting the Search

2.22.5.5 Proposed Amendments are Allowable

Date Published 16 Dec 2020

Where a response to a re-examination report includes a request for leave to amend the specification, the Commissioner must report on the request according to sec 104(2) and reg 10.2(1). Where the proposed amendments are allowable and overcome the issues raised in the re-examination report, the procedure of 2.22.6.2 Conclusion of Re-Examination Otherwise is to be followed.

Where the amendments are allowable, but do not overcome the objections outlined in the re-examination report, examiners should consider issuing a subsequent re-examination report. 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 2.22.5.7 Supervision of Reports).

Issuing subsequent re-examination reports after proposed amendments have been filed is distinctly different from issuing further examination reports on a standard patent application or innovation patent after proposed amendments have been filed. For further examination reports, the Commissioner should report as if each proposed amendment had been made. In contrast, in the case of a report in a subsequent re-examination action, there is no legislative basis for reporting as if each proposed amendment had been made.

Therefore, in this situation any subsequent adverse re-examination report should:

formally maintain any outstanding issues that were raised in the previous report and which were not overcome by the applicant's or patentee's statement under sec 99 or sec 101H (by reproduction of the text of the objections, or by reference to the report); and
acknowledge that, although the proposed amendments are allowable, they (and any statement under sec 99 or sec 101H) do not overcome the issues raised in the previous re-examination report, giving appropriate explanations.

Leave to amend should not be formally granted until the issues raised in the re-examination report have been overcome, and no further issues arise as a result of the proposed amendments. Such practice:

expedites the re-examination process as much as possible. Awaiting allowance of the amendments would interrupt the process, as a subsequent report could not be issued and new amendments proposed until the previous amendments had been advertised and allowed; and
removes the need for the applicant or patentee to file a new request for leave to amend after each re-examination report is issued (with the accompanying fee).