Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Issues specific to the Examination of additional applications

Date Published

Key Legislation:

Patents Act:

  • s27 Notice of matters affecting validity of standard patents  
  • s44(2) Request for examination
  • s81(2) Grant of patent of addition
  • s104 Amendments by applicants and patentees​​​​​​​

Order of examination

Examination of an additional application cannot commence unless a request for examination of the parent has been made (s81(2)). Where a request for examination of the parent has not been made, examiners should refer the parent application to CEG for the issuance of a direction under s44(2).

Wherever possible, examiners should issue a first report on the parent application before issuing a first report on the additional application in order to avoid complications at acceptance.

Note that examiners must not accept an application for a patent of addition until the parent application has been accepted ( Conditions for filing​​​​​​​). Where there are outstanding objections to the parent application, examiners should state in their report that the opinion in respect of Chapter 7 of the Act is tentative pending resolution of the objections to the parent application. A report to this effect should be issued, even when the application for the patent of addition is otherwise in order for acceptance.

Claim refers to parent specification

The patent of addition may contain a claim that specifically refers to the parent specification.  Such claims must be considered carefully to ensure that any reference is unambiguous. Examiners should note, however, that it is often necessary to refer to a particular claim of the parent specification, in order to avoid ambiguity.

Apparatus to carry out Parent Method

Where an application for a patent of addition is in respect to a specific apparatus for carrying out a method or process of the main invention and essentially includes integers which function to perform all the steps of that process or method, the application may proceed as an application for a patent of addition.

However, if the apparatus claimed is of a general nature, rather than specific, the applicability of Chapter 7 is doubtful. Cases of this kind should be referred to a supervising examiner.

Failure to Meet Patent of Addition Requirements

Where an application for a patent of addition does not meet the requirements of Chapter 7, for example, the patent of addition is not an improvement in or modification of the main invention, examiners should object accordingly.

In this situation the patent request for the patent of addition may be amended under s104 so as to no longer invoke Chapter 7. Amendment of the specification, and any statement relating to entitlement, may also be necessary.

Any subsequent report on an application so amended is to report as though the application has not invoked Chapter 7. This includes, where appropriate, that an inventive step objection may now apply based on the earlier parent application.

Conversion to Patent of Addition

A patent request for an ordinary application for a patent may be amended under s104 to an application for a patent of addition in rebuttal of an examiner's objection (for example, lack of inventive step) provided that all the requirements of Chapter 7 are satisfied.

Parent Case Under Opposition or Re-Examination, or Contains a Section 27 Notice

Where the parent case is under opposition or re-examination or contains a s27 notice, examiners should consider any available material or documentary evidence filed in those proceedings at each report stage. Examiners should also consider any issues raised in the material on the parent file and check whether these apply to the application for a patent of addition. Taking the available material into account, examiners are to report in the usual way but should avoid making comments which prejudge the outcome of any proceedings in respect to the parent case.

However, the fact that the parent case may be subject to proceedings (for example, opposition) and those proceedings have not concluded, does not mean that examination of the application for a patent of addition should be delayed provided that prejudging the outcome of the opposition does not occur. Where the circumstances are such that this condition cannot be met, the case must be referred to the Assistant General Manager (Oppositions).

It is particularly important that examiners consider the potential relevance of any decision which has issued in respect of the parent application.

Amended Reasons

Amended Reason Date Amended

Published for testing

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