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

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

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

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