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. PSO - Report Requirements

Date Published

Key Legislation:

Patents Act:

  • s43A Preliminary Search and Opinion
  • s45 Examination

Related Chapters:

Novelty and Inventive Step

The reporting requirements for novelty and inventive step are the same as apply to examination of a standard patent application under s45. ‘Whole of contents’ novelty objections should be included under the heading ‘Novelty and Inventive Step’.

Note that information made available through the doing of an act may also be considered for novelty and inventive step purposes.  ​​​​​​​

Patentable Subject Matter

The reporting requirements for patentable subject matter (manner of manufacture) are the same as apply to examination of a standard patent application under s45. Where some of the claims define subject matter that is not patentable under Australian law, and these were not searched, the opinion should clearly indicate the claims that have not been searched and provide reasons why a search was not conducted.​​​​​​​

Other Issues

The following issues should also be considered (in accordance with the practices for examination under s45):

  • Lack of unity – the opinion should identify all inventions and indicate the invention(s) searched;

  • Clear enough and complete enough disclosure;

  • Support;

  • Clarity;

  • Usefulness;

  • Omnibus claims; and

  • Multiple applications.

Examiners are not required to report on:

  • Entitlement;

  • Formalities relating to the patent request, complete specification or the Budapest Treaty; and

  • Postponement of acceptance.​​​​​​​

PSO Form Completion

The PSO form should be completed in accordance with the instructions provided in Annex - Preliminary Search and Opinion (PSO). The level of detail required is the same as for a report under s45.

Amended Reasons

Amended Reason Date Amended

Published for testing

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