2.22.7 Copy of Report on Re-Examination

Date Published

Following supervision of a re-examination report (as per Supervision of Adverse Reports), examiners should send the re-examination report to the applicant or patentee as per normal.  They should also email Patent Oppositions (email to ohl@ipaustralia.gov.au) and provide the following details:

  • case number; and
  • date that the report was issued.

Patent Oppositions will create a diary entry of the 2 month response date (if appropriate) and then send a copy of the report to:

  • the opponent following re-examination under the circumstances of opposition; or

  • the person who requested re-examination after grant of the patent, if that person is not the patentee.

A similar practice is to be followed if a subsequent re-examination report is issued in light of the patentee's statement under sec 99 or sec 101H.  The third party will be advised by Patent Oppositions that the Commissioner has decided to re-examine the patent again and sent a copy of the new re-examination report. Sending the third party a copy of the initial re-examination report is a statutory requirement (reg 9.3(1)). Subsequent reports are initiated by the Commissioner and are therefore not covered by this regulation. They are, however, sent to the third party as a matter of courtesy, as are any amendments or statements under sec 99 (or sec 101H) filed by the patentee.

Any material sent to the third party should be accompanied by a covering letter (generated by Patent Oppositions) informing them that:

  • this material is being sent to them as a matter of courtesy only (or as a consequence of reg 9.3(1)); and

  • that they have no right to any further involvement in the re-examination process (such as filing submissions for the examiner to consider, to appear at any refusal or revocation hearing, or right of appeal of any decision the Commissioner may subsequently make), but that the Commissioner will endeavour to forward to them any relevant correspondence concerning the re-examination process.

Where there are proposed amendments, the opponent needs to be additionally informed that they have the right to oppose the amendments under sec 104(4) once leave to amend has been granted and advertised in the Official Journal.  However, they should be monitoring the Journal themselves to ensure that they know when leave has been granted and not relying on the Commissioner to advise them when advertisement will occur.