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

2.15.8 Postponement of Acceptance

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

2.31 Annex B - Procedural Outline for Examination of an Innovation Patent

Date Published 16 Dec 2020

Note: The order of these steps is not mandatory and may be varied as appropriate.

First Report

1.	Determine the type of innovation patent. An innovation patent application may be for a divisional or Convention application, "associated" with provisional(s), but not for a patent of addition.	2.31.2 Types of Innovation Patent Application
2.	Check the case file for any matters pertaining to examination or any other outstanding actions.	2.13.1 Initial Considerations 2.31.1.11 Notification by Third Parties
3.	If a Convention application, check: priority documents (where applicable) filed in time first made in prescribed foreign country certified copy.	2.21 Convention Applications 2.31.2.4 Convention Applications
4.	Check to see whether any amendments have already been filed.	2.13.7.1 Amendments in Anticipation 2.23.2.8 Unfinalised Amendments Prior to Examination 2.31.4.7 Amendments
5.	Read the claims and, if necessary, the description to get a broad understanding of the scope of the invention: determine whether the claims define a manner of manufacture.	2.9.2 Patentable Subject Matter (Manner of Manufacture)
6.	Read the complete specification and determine: what is the admitted prior art what is the problem to be overcome whether it meets the requirements of sec 40(2).	2.11 Section 40 - Specifications 2.11.2.2 Rules of Construction
7.	Construe the claims, determine their scope and note: whether they define one invention whether they meet the requirements of sec 40(3) whether the specification ends with at least 1, and not more than 5, claims.	2.11.4 Claims Define the Invention 2.11.2.2 Rules of Construction 2.31.1.1 Introduction 2.31.4.4 Ground (1): Section 40
8.	Determine the search strategy.	4.1 Searching
9.	Conduct the search where appropriate.	4.1 Searching
10.	When conducting the search, consider: novelty including "whole of contents" innovative step and other sec 18 matters.	2.4 Novelty 2.31.4.5 Ground (2): Subsection 18(1A)
11.	Check for multiple applications claiming the same invention.	2.18.3.2 Innovation Patent
12.	Complete the Search Information Statement.	4.1.6 Recording the Search Details 4.1 Annex D – Search Information Statement
13.	Prepare the report, ensuring all relevant grounds of revocation are raised. Submit the report for supervision where necessary.	2.1.5. Inconsistent or Piecemeal Examination 2.1.6 Examination and Report Requirements
	For first reports, set the time for certification at six months from the date of the first report.	2.31.4.2 Period for Examination to be Carried Out
	Where third parties have requested examination, ensure a copy of the report is sent to them, as well as the patentee.	5.11.4.1.3 Examiner’s Adverse Report to Third Party

Further Reports

Adverse

1.	Check that the period for examination has not expired.	2.31.4.2 Period for Examination to be Carried Out
2.	Consider whether the amendments filed, and/or the submissions in rebuttal, overcome the grounds of revocation raised in the last report: determine whether the amendments are allowable consider form of the amendments.	2.1.8 Furthers 2.23.3.8 Form Amendments Should Take 2.23.8 Allowability Under Section 102(1) 2.31.4.7 Amendments
3.	Check for new grounds of revocation.	2.31.4.3 Grounds of Examination
4.	Maintain existing grounds or raise new grounds where appropriate.	2.1.8 Furthers 2.13.5 Stringency of Tests During Examination 2.1.5 Inconsistent or Piecemeal Examination
5.	Submit third and subsequent reports for review by the supervising examiner.	2.1.8 Furthers
6.	For further reports, ensure that the report indicates the final date for certification is six months from the date of the first report, or a later date, if applicable.	2.31.4.2 Period for Examination to be Carried Out
	Where third parties have requested examination, ensure a copy of the report is sent to them, as well as the patentee.	5.11.4.1.3 Examiner’s Adverse Report to Third Party

Clear

1.

Check that the period for examination has not expired.

2.31.4.2 Period for Examination to be Carried Out

2.

Certify the case if the necessary requirements are met.

At final report stage:

ensure all the pages of the final report form are complete
submit for supervision if necessary.

2.31.4.3 Grounds of Examination

5.11.5.3 Certification

5.11.8 Certification