Regulation 9.5 (completion of re-examination) only applies to re-examination under sec 97(1) and is only of relevance if re-examination was conducted in opposition proceedings. Otherwise, the legislation does not define exactly when re-examination has been "completed". The following information relates to re-examination outside of opposition proceedings.

After issuing a re-examination report and receiving a statement under sec 99 or sec 101H, the re-examination action per se has concluded.

Issues Raised in Re-Examination Report Not Overcome

In this situation the Commissioner has the following options:

set the matter for refusal or revocation - see 2.22.8 Refusal to Grant a Patent Following Re-Examination and 2.22.9 Revocation of Patent Following Re-Examination; or
issue subsequent re-examination reports, i.e. commence a further re-examination action - see 2.22.5.4 Subsequent Adverse Reports; or
issue an adverse report on the allowability of amendments - see 2.22.5.6 Proposed Amendments are not Allowable.

Issues Raised in Re-Examination Report Overcome

If the statement under sec 99 or sec 101H, or the proposed amendments, overcome the issues raised in the re-examination report, and do not give rise to any further issues (including non-allowability of amendments), examiners should proceed as follows.

If there are no proposed amendments, examiners are to write to the applicant or patentee and inform them that the statement under sec 99 (in the case of a standard patent) or sec 101H (in the case of an innovation patent) has addressed all of the issues raised in the re-examination report and that the re-examination has now concluded. In the case of an application for a standard patent, the applicant should be informed that the patent will be granted pursuant to sec 61 in due course. (This advice is a courtesy only and is not a legislative requirement).

If there are proposed amendments, examiners are to write to the applicant or patentee and inform them that once the amendments have been allowed, the objections raised in the re-examination report will be overcome. In the case of an application for a standard patent, the applicant should be informed that the patent will then be granted pursuant to sec 61 in due course. (This advice is a courtesy only and is not a legislative requirement). For processing of the amendments, see 5.15.2.7 Allowing Voluntary Sec 104 Amendments Filed During Re-Examination Process.

Note: When completing the sec 104 voluntary allowance form for amendments to a granted patent, examiners should check the box relating to relevant proceedings pending. They are not required to request sec 112 information from the patentee, provided this information was requested in the ‘intend to re-examine’ letter sent at the commencement of re-examination (see 2.22.3.2 Post-Grant (Standard and Innovation Patents)).

After any amendments have finally been allowed, Patent Oppositions will inform the applicant or patentee that the issues raised in the re-examination report have been overcome, and that the re-examination has concluded. In the case of an application for a standard patent, the applicant will be informed that the patent will be granted pursuant to sec 61 in due course. (This advice is a courtesy only and is not a legislative requirement).