3.3.2 General Approach to Examination

Also in this Chapter:

• 3.3.1 Use of FERs (earlier search and examination reports)​​​​​​​
• 3.3.3 Reserving Opinion and Restricting Search
• 3.3.4 Communicating with the Applicant and Third Parties

On this page

• Overview
• Report Formulation
• Report Requirements 

Overview

Examination of an application should be conducted as efficiently as possible.  Clear and informative reporting is critical. Examiners therefore need to give careful consideration to the formulation of their report, investing higher levels of detail in substantive issues which once addressed, will often lead to minor or peripheral issues being rectified at the same time.   

Report Formulation

Each examination report must be as comprehensive as possible in the circumstances of the case at hand.  At each stage of examination, examiners should focus on the key issues of invalidity, i.e. sec 40 and sec 18 issues, which affect prosecution of the case. 

Examiners should raise all substantive issues at the earliest possible point during prosecution.  Most often this will be the point at which the scope of monopoly sought, or the alleged inventive concept, can be reasonably identified.  It can often be difficult to determine where the actual invention resides at first report, and it may only be at further report stage that the key issues of invalidity can be properly understood.  Factors which determine the most effective stage to raise key issues and the level of detail required in a report include:

• the number of claims, very broad or divergent claims, or multiple dependent claims.
• the complexity and number of citations and/or foreign examination reports “FERs” (see 3.3.1 Use of FERs for additional detail), and
• where the technology is particularly difficult. 

At each stage of examination, the key issues of invalidity will primarily require a detailed consideration with respect to the independent claims, with a more generalised approach for the dependent claims.  The level of attention paid to dependent claims is a matter of judgement on the part of examiners.  (see 3.3.2.1 Level of Detail in the Report for further information and 5.6.2.8 Further Report Considerations).

While this approach allows flexibility in dealing with complex cases and those where it is difficult to clearly determine what the claimed invention is likely to be after amendment, or what is the inventive concept disclosed, examiners are still required to consider all key invalidity issues and report on those that may reasonably be determined from the application.

The same general approach also applies to further reports. If the issues raised in the previous report have not been resolved by amendments or submissions, or new issues have arisen as a result of either, then a further report addressing the new or continuing issues will be required.  At later report stages issues generally become narrower and require deeper analysis and examiners will often need to provide further detail in their reports to cover issues in dispute.  However, it will generally not be necessary to provide extra detail for issues raised at an earlier report which have not been challenged or overcome in the applicant’s response.

In both complex cases and at further report stages, more detailed argument is frequently required, and clarity of reasoning is particularly important. These considerations are also crucial when engaging in discussions with the applicant via phone.

Where such complexities arise and the examiner is having difficulty determining a suitable approach, or where, at later report stage, progress of the remaining matters stalls, examiners should, in the first instance, refer the case to a senior examiner for advice. Depending on the nature of the issue and whether the problem persists, the matter should be escalated to the supervising examiner.

Report Requirements

At each stage reports should emphasise and detail the serious issues affecting progression of the application.

Examiners should report in detail on the independent claims and may generally report more broadly on the dependent claims. However, more detail should be provided for the dependent claims where examiners are readily able to determine that a particular feature or combination of features in those claims relates to the inventive concept and therefore likely to be promoted to an independent claim at a subsequent stage.  Multiple independent claims, e.g. those with similar features, can be grouped where possible and discussed under the one objection.

All objections must have a statutory basis and should be succinct. They should commence by identifying the statutory basis of the objection, and follow with sufficient explanation, including details of any premise upon which the examiner relies (such as interpretation of a term) and relevant passages of citations, for the applicant to understand the nature of the issue sufficiently to address it.  Different grounds of objection should not be mixed together, except for novelty and inventive step, which may be combined where appropriate.  In most cases it can be assumed that claims which are not novel also lack inventive step and these issues need not be reported on separately.

For further information on the level of detail required in the report see 3.3.2.1 Level of Detail in the Report