- Home
- 2. About this Manual
- 2.1 Purpose of the Manual
- 2.2 Navigating the Manual
- 2.3 How our Practice and Procedures are Determined
- 2.4 Updating the Manual
- 3. Quality and Customer Engagement
- 3.1 Quality
- 3.2 Customer Service Charter (Timeliness Guidelines)
- 3.3 Efficient Examination
- 3.3.1 Use of FERs (Earlier Search and Examination Reports)
- 3.3.2 General Approach to Examination
- 3.3.3 Reserving Opinion and Restricting the Search
- 3.3.4 Communicating with the Applicant and Third Parties
- 3.4 Assisting Unrepresented Applicants
- 3.5 Staff Delegations, and Restrictions on Providing Customer Assistance
- 4. Classification and Searching
- 4.1 Search Theory
- 4.2 Patent Classifications
- 4.2.1 Patent Classification Systems
- 4.2.1.1 International Patent Classification (IPC)
- 4.2.1.1.1 Structure of the IPC
- 4.2.1.1.2 Headings and Titles
- 4.2.1.1.3 Definitions, Warnings and Notes
- 4.2.1.1.4 Function-Oriented and Application-Oriented Places
- 4.2.1.1.5 References
- 4.2.1.1.6 Indexing Codes
- 4.2.1.2 Cooperative Patent Classification (CPC)
- 4.2.2 Principles of Classification
- 4.2.2.1 Invention Information and Additional Information
- 4.2.2.1.1 Application of Indexing Codes/2000 Series
- 4.2.2.1.2 Classifying in Residual Places
- 4.2.2.1.3 Places that cannot be the First Symbol
- 4.2.2.2 Classification Priority Rules
- 4.2.2.2.1 Common Rule
- 4.2.2.2.2 First Place Priority Rule
- 4.2.2.2.3 Last Place Priority Rule
- 4.2.2.2.4 Special Rules
- 4.2.2.2.5 Classifying a Combination of Technical Subjects
- 4.2.2.3 Classifying in Function-Oriented and Application-Oriented Places
- 4.2.2.4 Classifying Chemical Compounds
- 4.2.2.5 CPC Classification Rules
- 4.2.2.6 Classification using C-sets
- 4.2.3 Other Classification Information
- 4.2.3.1 Sub-Codes - Discontinued
- 4.2.3.2 The Australian Classification System - Discontinued
- 4.2.3.3 Indexing According to IPC Edition (2006) - Discontinued
- 4.2.3.4 Master Classification Database (MDC)
- 4.2.3.5 Recording Classification Symbols on Machine-Readable Records
- 4.2.3.6 Presentation of Classification Symbols and Indexing Codes on Patent Documents
- 4.3 Initial Search Considerations
- 4.3.1 Construction and the Inventive Concept
- 4.3.2 Earlier Search Results
- 4.3.3 Additional Searching
- 4.3.4 Top-Up Searching
- 4.3.5 Preliminary Search
- 4.3.6 Applicant and/or Inventor Name Searching
- 4.4 Development of the Search Strategy
- 4.4.1 Three Person Team (3PT)
- 4.4.2 Search Strategy Considerations
- 4.4.2.1 Independent Claims
- 4.4.2.2 Dependent Claims
- 4.4.2.3 Broad Claims
- 4.4.2.4 Reserving the Search
- 4.4.2.5 Controlled Language
- 4.4.3 Search Area
- 4.5 Conducting the Search
- 4.6 Recording the Search Details
- 4.7 Annexures
- Annex D - Search Information Statement
- Annex E - Examples and Instructions for completing the SIS for Sequence and Chemical Structure Searches
- Annex N - Guidelines for Searching Indian TKDL
- Annex P - The Role of the Three Person Team (3PT) in Searching
- 4.8 User Guides
- 5. National
- 5.1 Procedures
- 5.2 Understanding Legislation
- 5.2.1 Modern Australian Law
- 5.2.2 Working with case law
- 5.2.3 Working with statute
- 5.2.4 Practical guide to interpreting legislation
- 5.3 Formalities and Forms
- 5.3.1 Formalities Checking
- 5.3.1.1 Formalities Required and Assessed at Filing
- 5.3.1.2 Credible Address for Service
- 5.3.1.3 Formalities Required and Assessed During Examination
- 5.3.2 Formal requirements of the Specification
- 5.3.2.1 Title of the Application
- 5.3.2.2 Abstracts
- 5.3.2.3 Requirements for Text, Pagination, Formulas, Equations, Drawings, Graphics, and Photographs
- 5.3.2.4 Substitute Pages to comply with formalities
- 5.3.2.5 Requirements for Amino Acid and Nucleotide Sequences
- 5.3.2.6 Scandalous Matter
- 5.3.3 Approved Forms (including patent request)
- 5.3.4 Signature Requirements for Forms and Other Documents
- 5.3.5 Return or Deletion of Documents
- 5.4 Entitlement
- 5.4.1 Who can file and who can be granted a patent
- 5.4.2 Statement of entitlement
- 5.4.3 Artificial Intelligence - Inventorship and Entitlement
- 5.4.4 Annex A - Examples of Legal Persons
- 5.4.5 Annex B - Examples of Organisations of Uncertain Status as Legal Persons
- 5.5 Construction of Specifications, Claims, and Claim Types
- 5.5.1 Purpose of Construction
- 5.5.2 Considerations Relevant to Construction of the Specification
- 5.5.2.1 Initial Considerations
- 5.5.2.2 The Addressee
- 5.5.2.3 The Role of Common General Knowledge
- 5.5.2.4 The Invention Described
- 5.5.3 Rules of Construction for a Specification
- 5.5.3.1 Words are Given Plain Meaning
- 5.5.3.2 Specification Read as a Whole
- 5.5.3.3 Purposive Construction
- 5.5.3.4 Dictionary Principle
- 5.5.3.5 Reject the Absurd
- 5.5.3.6 Description Construed as a Technical Document
- 5.5.3.7 Errors, Mistakes, Omissions
- 5.5.4 Claim Construction and Claim Types
- 5.5.4.1 Claims are Construed as a Legal Document
- 5.5.4.2 Presumption Against Redundancy
- 5.5.4.3 Omnibus Claims
- 5.5.4.4 Swiss Claims
- 5.5.4.5 Product by Process Claims
- 5.5.4.6 Parametric Claims
- 5.5.4.7 ‘For Use’, ‘When Used’ and Similar Wording in Claims
- 5.5.4.8 ‘Comprises‘, ‘Includes‘, ‘Consists of‘ and ‘Contains‘ and Similar Wording in Claims
- 5.5.4.9 Reference Numerals in Claims
- 5.5.4.10 Relative Terms
- 5.5.4.11 ‘Substantially‘, ‘About‘, ‘Generally’
- 5.5.4.12 Appended Claims
- 5.6 Examination
- 5.6.1 Relevant Dates, Definitions, Legal Standards and Other Prescribed Matters (e.g Publication)
- 5.6.1.1 Priority dates and Filing Dates
- 5.6.1.2 Effect of Publication
- 5.6.1.3 Definitions (Invention, Alleged Invention, Meaning of a Document etc.)
- 5.6.1.4 Balance of Probabilities Standard
- 5.6.1.5 Application of the Balance of Probabilities in Examination
- 5.6.2 Factors to consider before commencing examination
- 5.6.2.1 Request for Examination
- 5.6.2.2 Application in a State of Lapse?
- 5.6.2.3 Extension of Time Requested (s223 actions)
- 5.6.2.4 Payment of Fees
- 5.6.2.5 Translations of Specifications, Article 19 and Article 34 Amendments (Requirements for Certification, Poor Translations)
- 5.6.2.6 Obtaining Priority Documents
- 5.6.2.7 Report Dispatch, Correction of Report etc.
- 5.6.2.8 Further Report Considerations
- 5.6.2.9 Convention applications
- 5.6.3 The Specification and Claims to Examine
- 5.6.3.1 Consideration of Amendments Made prior to examination
- 5.6.3.2 Claims are directed to a Single Invention (Unity)
- 5.6.3.3 Omnibus claims – References to the Descriptions or Drawings
- 5.6.3.4 Provisional specifications - Examination
- 5.6.4 Citations: Prior Art Base and Construction of Prior Art
- 5.6.4.1 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)
- 5.6.4.2 Construing a Citation
- 5.6.4.3 Level of Disclosure Required (Enabling Disclosure, Clear and Unmistakable Directions etc)
- 5.6.4.4 Single Source of Information, Combination of Documents
- 5.6.4.5 Third Party Notifications
- 5.6.4.6 Identifying and Raising Citations
- 5.6.5 Novelty, Whole of Contents, Grace Periods, Secret Use
- 5.6.5.1 Determining Novelty
- 5.6.5.2 Whole of Contents
- 5.6.5.3 Prior Use, Secret Use and Confidential Information
- 5.6.5.4 Novelty - Specific Examples
- 5.6.5.5 Selections
- 5.6.5.6 Issues Specific to Chemical Compositions
- 5.6.6 Inventive Step
- 5.6.6.1 Inventive Step Requirements
- 5.6.6.2 Information for Assessing Inventive Step
- 5.6.6.3 Tests for Inventive Step
- 5.6.6.4 Assessing Inventive Step
- 5.6.6.5 Indicators of Inventive Step
- 5.6.6.6 Issues Specific to Chemical Compositions
- 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (S40 considerations)
- 5.6.7.1 Claims are Clear and Succinct
- 5.6.7.2 Clear and Complete Disclosure s40(2)(a)
- 5.6.7.3 Support for the Claims s40(3)
- 5.6.7.4 Difference Between ‘Clear and Complete Disclosure’ and ‘Support’
- 5.6.7.5 Best Method
- 5.6.7.6 Complete Disclosure Micro-Organisms and Other Life Forms (Budapest Treaty, Deposit Requirements)
- 5.6.7.7 Claims define the Invention
- 5.6.7.8 Annex A - Examples: Subsections 40(2)(a) and 40(3)
- 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)
- 5.6.8.1 General Principles-Assessing Manner of Manufacture
- 5.6.8.2 Alleged Invention
- 5.6.8.3 Fine Arts
- 5.6.8.4 Discoveries, Ideas, Scientific Theories, Schemes and Plans
- 5.6.8.5 Printed Matter
- 5.6.8.6 Computer Implemented Inventions, Schemes and Business Methods
- 5.6.8.7 Games and Gaming Machines
- 5.6.8.8 Mathematical Algorithms
- 5.6.8.9 Methods of Testing, Observation and Measurement
- 5.6.8.10 Mere Working Directions
- 5.6.8.11 Nucleic Acids and Genetic Information
- 5.6.8.12 Micro-Organisms and Other Life Forms
- 5.6.8.13 Treatment of Human Beings
- 5.6.8.14 Human Beings and Biological Processes for Their Generation
- 5.6.8.15 Agriculture and Horticulture
- 5.6.8.16 Combinations, Collocations, Kits, Packages and Mere Admixtures
- 5.6.8.17 New Uses
- 5.6.8.18 Other Issues e.g. Contrary to Law, Mere Admixtures
- 5.6.8.19 Useful (Utility)
- 5.6.8.20 Annex A - History of Manner of Manufacture
- 5.6.9 Acceptance, Grant and Refusal of Applications
- 5.6.9.1 Conditions and Time for Acceptance
- 5.6.9.2 Postponement of Acceptance
- 5.6.9.3 Extension of Acceptance Period
- 5.6.9.4 Revocation of Acceptance
- 5.6.9.5 Refusal of Acceptance-Specific Circumstances
- 5.6.9.6 Refusal of an Application
- 5.6.9.7 Continued Examination-Result of a Decision
- 5.6.9.8 Lapsing of an Application
- 5.6.9.9 Withdrawal of an Application
- 5.6.9.10 Double Patenting - S64(2) and 101B(2)(h) - Multiple Applications
- 5.6.9.11 Parallel applications (applications for both innovation and standard)
- 5.6.9.12 Register of Patents
- 5.6.9.13 Annex A - Example Bar-to-Grant Letter (Accepted Despite Multiple Inventions)
- 5.6.9.14 Acceptance and QRS Issues
- 5.6.10 Divisional Applications
- 5.6.10.1 Requirements to Claim Divisional Status
- 5.6.10.2 Priority Entitlement
- 5.6.10.3 Time Limits for Filing
- 5.6.10.4 Status of the Parent
- 5.6.10.5 Examination of Divisional Applications
- 5.6.10.6 Innovation Divisional Applications
- 5.6.10.7 Annex A - Procedural Outline to Divisional Examination
- 5.6.11 Patents of Addition
- 5.6.11.1 Conditions for Filing
- 5.6.11.2 Improvement or Modification
- 5.6.11.3 Differentiation from the Parent
- 5.6.11.4 Examination of Additional Applications
- 5.6.11.5 Amendment of the Parent
- 5.6.11.6 Annex A - Procedural Outline to Patents of Addition Examination
- 5.6.12 Preliminary search and Opinion (PSO)
- 5.6.12.1 Requests for PSO
- 5.6.12.2 PSO - Search and Examination Procedure
- 5.6.12.3 PSO - Report Requirements
- 5.6.12.4 Response to the PSO
- 5.6.13 Re-Examination
- 5.6.13.1 Commencing Re-Examination
- 5.6.13.2 Re-Examination Process
- 5.6.13.3 Completion of Re-Examination
- 5.6.13.4 Refusal to Grant or Revocation Following Re-Examination
- 5.6.14 Prohibition Orders- Applications Concerning Defence of the Commonwealth and/or involving Associated Technology (e.g. enrichment of nuclear material)
- 5.6.14.1 Effect of Prohibition orders
- 5.6.14.2 Applications Concerning Defence of the Commonwealth
- 5.6.14.3 Applications Concerning ‘Associated Technology’ (Chapter 15 Applications)
- 5.6.15 Innovation Patents
- 5.6.15.1 The Innovation Patent System
- 5.6.15.2 Types of Innovation Patents
- 5.6.15.3 Formalities Check for Innovation Patents
- 5.6.15.4 Examination of Innovation Patents
- 5.6.15.5 Determining Innovative step
- 5.6.15.6 Certification, Opposition, Ceasing/Expiring of Innovation Patents
- 5.6.15.7 Annex - Innovation Patent Certification Form
- 5.6.16 Annex A - Procedural Outline for Full Examination of a Standard Patent Application
- 5.6.17 Annex B - Examination of National Phase Applications: Indicators of Special or Different Considerations
- 5.6.18 Annex C - Applicant and Inventor Details as Shown on PCT Pamphlet Front Page
- 5.6.19 Annex D - Example of PCT Pamphlet Front Page
- 5.7 Amendments
- 5.7.1 What can be Amended and When
- 5.7.1.1 What Documents can be Amended?
- 5.7.1.2 Who can Request Amendments (incl consent of licensees/mortgagees)?
- 5.7.1.3 When can Amendments be Requested?
- 5.7.1.4 Requirements to provide Reasons for Amendments
- 5.7.1.5 Withdrawal of Amendments
- 5.7.1.6 Circumstances where an amendment cannot be processed (i.e. pending court proceedings, Application has been Refused)
- 5.7.1.7 Granting Leave to Amend
- 5.7.1.8 Fees Associated with Amendments
- 5.7.1.9 Annex A - Guidelines for Completing the Voluntary Section 104 Allowance Form
- 5.7.2 Amendment of the Patent Request and Other Filed Documents
- 5.7.2.1 Form of the Request to Amend the Patent Request
- 5.7.2.2 Non-Allowable Amendments to Patent Request
- 5.7.2.3 Changing the Applicant or Nominated Person
- 5.7.2.4 Converting the Application
- 5.7.2.5 Amendments to the Notice of Entitlement and Other Documents
- 5.7.3 Amendments-Provisional Applications
- 5.7.4 Amendments to Complete Specifications
- 5.7.4.1 Form of proposed amendments (statement of proposed amendments)
- 5.7.4.2 Allowability of Amendments Prior to Acceptance
- 5.7.4.3 Allowability of Amendments After Acceptance
- 5.7.4.4 Allowability of Amendments After Grant
- 5.7.4.5 Amendments not Otherwise Allowable
- 5.7.4.6 Opposition to Amendments
- 5.7.4.7 Annex A - Amended Claims Format
- 5.7.5 Amendments to Correct a Clerical Error or Obvious Mistake
- 5.7.5.1 Definition of Clerical Error
- 5.7.5.2 Definition of Obvious Mistake
- 5.7.5.3 Evidence required to prove a Clerical Error or Obvious Mistake
- 5.7.6 Amendments Relating to Micro-Organisms and Sequence Listings
- 5.7.6.1 Insertion or Alteration of Sec 6(c) Information
- 5.7.6.2 Amendments or Corrections of Sequence Listings
- 5.7.7 Amendments during Opposition Proceedings
- 5.7.7.1 Initial Processing of the Request to Amend During Oppositions
- 5.7.7.2 Considering the Amendments and Comments from the Opponent
- 5.7.7.3 Considering Amendments as a Result of a Hearing Decision
- 5.7.7.4 Amendments where Decision of the Commissioner is Appealed
- 5.7.7.5 Annex A - Section 104 Amendments During Opposition Proceedings: Check Sheet
- 6. International
- 6.1 International Searching
- 6.1.1 Procedural Outline - PCT International Search
- 6.1.2 Introduction- International Searching
- 6.1.2.1 Overview- International Searching
- 6.1.2.2 Overview-International Search Opinion (ISO)
- 6.1.2.3 General Procedures
- 6.1.2.4 Extent of Search
- 6.1.2.5 Minimum Documentation
- 6.1.2.6 Examination Section Procedures
- 6.1.2.7 Searching Examiner
- 6.1.2.8 Other Considerations
- 6.1.2.9 Copending Applications
- 6.1.3 Search Allocation and Preliminary Classification
- 6.1.4 Unity of Invention
- 6.1.4.1 Unity of Invention Background
- 6.1.4.2 Determining Lack of Unity
- 6.1.4.3 Combinations of Different Categories of Claims
- 6.1.4.4 Markush Practice
- 6.1.4.5 Intermediate and Final Products in Chemical Applications
- 6.1.4.6 Biotechnological Inventions
- 6.1.4.7 Single General Inventive Concept
- 6.1.4.8 A Priori and A Posteriori Lack of Unity
- 6.1.4.9 Issuing the Invitation to Pay Additional Search Fees
- 6.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity
- 6.1.4.11 Payment of Additional Search Fees Under Protest
- 6.1.4.12 Completing the Search Report
- 6.1.4.13 Time for Completing the Search Report
- 6.1.4.14 Reported Decisions
- 6.1.4.15 Other Decisions from the EPO
- 6.1.5 Abstract and Title
- 6.1.6 Subjects to be Excluded from the Search
- 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6
- 6.1.7.1 Claim Interpretation According to the PCT Guidelines
- 6.1.7.1.1 PCT Guideline References and Flow Chart
- 6.1.7.1.2 Overview of the Hierarchy
- 6.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning
- 6.1.7.1.4 Closed and Open Definitions and Implications for Interpretation
- 6.1.7.1.5 Implications of the Hierarchy on Searching
- 6.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2]
- 6.1.7.1.7 Interpretation of Citations - Inherency
- 6.1.7.2 Broad Claims
- 6.1.7.3 PCT Articles 5 and 6
- 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims
- 6.1.7.5 Procedure for Informal Communication with the Applicant
- 6.1.8 Search Strategy
- 6.1.8.1 Introduction
- 6.1.8.2 The Three Person Team (3PT)
- 6.1.8.3 Area of Search
- 6.1.8.4 Search Considerations
- 6.1.9 Basis of the Search
- 6.1.10 Non-Patent Literature
- 6.1.11 Search Procedure
- 6.1.11.1 Overview - Novelty / Inventive Step
- 6.1.11.2 Inventive Step
- 6.1.11.3 Searching Product by Process Claims
- 6.1.11.4 Dates Searched
- 6.1.11.5 Conducting the Search
- 6.1.11.6 Useful Techniques ("piggy back/forward" searching)
- 6.1.11.7 Obtaining Full Copies
- 6.1.11.8 Considering and Culling the Documents
- 6.1.11.9 Ending the Search
- 6.1.11.10 Categorising the Citations
- 6.1.11.11 Grouping the Claims
- 6.1.12 Search Report and Notification Form Completion
- 6.1.12.1 Background Search Report and Notification Form Completion
- 6.1.12.2 Applicant Details
- 6.1.12.3 General Details
- 6.1.12.4 Fields Searched
- 6.1.12.5 Documents Considered to be Relevant
- 6.1.12.5.1 Selection of Documents Considered to be Relevant
- 6.1.12.5.2 Citation Category
- 6.1.12.5.3 Citation of Prior Art Documents
- 6.1.12.5.4 Citation of URLs
- 6.1.12.5.5 Citation Examples
- 6.1.12.5.6 Citing Patent Documents Retrieved from EPOQUE
- 6.1.12.5.7 Relevant Claim Numbers
- 6.1.12.6 Family Member Identification
- 6.1.12.7 Date of Actual Completion of the Search
- 6.1.12.8 Refund Due
- 6.1.12.9 Contents of Case File at Completion
- 6.1.13 Reissued, Amended or Corrected ISRs and ISOs
- 6.1.14 Priority Document
- 6.1.15 Foreign Patent Search Aids and Documentation
- 6.1.16 Assistance with Foreign Languages
- 6.1.17 Rule 91 Obvious Mistakes in Documents
- 6.1.18 Nucleotide and/or Amino Acid Sequence Listings
- 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings
- 6.1.18.2 Office Practice
- 6.1.18.3 Summary
- 6.1.19 Annexes
- Annex A - Blank ISR
- Annex B - Completed ISR
- Annex C - Completed ISR
- Annex D - Declaration of Non-Establishment of ISR
- Annex E - Completed Invitation to pay additional fees
- Annex F - Completed ISR with unity observations
- Annex H - Searching Broad Claims
- Annex I - Completed notification of change of abstract
- Annex J - Completed notification of decision concerning request for rectification
- Annex K - The role of the 3 Person Team in Searching
- Annex S - Refund of Search Fees
- Annex U - ISR Quality Checklist
- Annex V - Internet Searching
- Annex W - Obtaining full text from internet
- Annex Z - USPTO kind codes
- Annex AA - Markush Claims
- Annex BB - Article 5/6 Comparisons
- 6.2 International Type Searching
- 6.2.1 Procedural Outline International Type Search Report
- 6.2.2 Introduction - International Type Searching
- 6.2.3 Classification and Search Indication
- 6.2.4 Unity of Invention
- 6.2.5 Subjects to be Excluded from the Search
- 6.2.6 Obscurities, Inconsistencies or Contradictions
- 6.2.7 Abstract and Title
- 6.2.8 Search Report
- 6.2.9 Completing Search Report and Opinion Form
- 6.2.10 Annexes
- 6.3 International Examination
- 6.3.1 Procedural Outline Written Opinion
- 6.3.2 Introduction International Examination
- 6.3.3 The Demand and IPRPII
- 6.3.4 Top-up Search
- 6.3.5 First IPE action
- 6.3.5.1 Introduction - First IPE Action
- 6.3.5.2 Supplementary International Search Report
- 6.3.5.3 PCT Third Party Observations
- 6.3.6 Response to Opinion
- 6.3.7 IPRPII and Notification
- 6.3.8 Completing ISO, IPEO and IPRPII Forms
- 6.3.8.1 Front Page and Notification Application Details
- 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs
- 6.3.8.3 Box II Priority
- 6.3.8.4 Box III Non-establishment of Opinion
- 6.3.8.5 Box IV Unity of Invention
- 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability
- 6.3.8.7 Box VI Certain Documents Cited
- 6.3.8.8 Box VII Certain Defects
- 6.3.8.9 Box VIII Certain Observations
- 6.3.9 General Considerations
- 6.3.9.1 Article 19 or Article 34(2)(b) Amendments
- 6.3.9.2 Formalities
- 6.3.9.3 General Notes on Form Completion
- 6.3.9.4 Rule 91 Obvious Mistakes in Documents
- 6.3.9.5 Processing withdrawals of PCTs
- 6.3.10 Annexes
- Annex A - Written Opinion-ISA
- Annex B - Written Opinion-IPEO
- Annex C - Notification of Transmittal of IPERII
- Annex D - IPRPII
- Annex E - IPRPII Clear Novel and Inventive Box V Only
- Annex F - Invitation to Restrict/Pay Additional Fees - Unity
- Annex G - Extension of Time Limit
- Annex H - IPE Quality Checklist
- Annex I - Examples of Inventive Step Objections
- Annex J - Examples of Objections under PCT Articles 5 and 6
- Annex K - Example of PCT Third Party Observations
- Annex L - Blank Written Opinion - ISA
- Annex M - Blank Written Opinion - IPEO
- Annex N - Blank IPRPII
- Annex O - ISO/ISR with Omnibus Claims
- Annex P - PCT Timeline
- Annex Z - Best Practice Examples
- 6.4 Fiji Applications
- 6.4.1 Introduction
- 6.4.2 Completion Time and Priority
- 6.4.3 Initial Processing
- 6.4.4 Search Procedure
- 6.4.5 Search Report and Advisory Opinion
- 6.4.6 Further Advisory Opinion
- 6.4.7 Final Processing
- 6.4.8 Annexes
- 6.5 Thai Applications
- 6.5.1 Introduction to Thai Applications
- 6.5.2 Completion Time and Priority Thai
- 6.5.3 Initial Processing Thai
- 6.5.4 Search Procedure Thai
- 6.5.5 Search Report Thai
- 6.5.6 Final Processing Thai
- 6.5.7 Annex A - Thai Search Report
- 6.6 WIPO Searches
- 6.6.1 Introduction
- 6.6.2 Completion Time and Priority
- 6.6.3 Initial Processing
- 6.6.4 Search Procedure
- 6.6.5 Search Report
- 6.6.6 Final Processing
- 6.6.7 Annexes
- 6.7 Other Countries
- 6.8 PCT Articles, Regulations and Guidelines et al
- 6.9 Miscellaneous
- 7. Oppositions, Disputes and Extensions
- 7.1 Role and Powers of the Commissioner in Hearings
- 7.2 Oppositions, Disputes and other proceedings-Procedural summaries
- 7.2.1 Oppositions to grant of a standard patent-Section 59 oppositions
- 7.2.1.1 Commencing the Opposition - Filing a Notice of Opposition
- 7.2.1.2 Filing the Statement of Grounds and Particulars
- 7.2.1.3 Evidence and Evidentiary Periods
- 7.2.1.4 Finalising the Opposition
- 7.2.2 Opposition to Innovation Patents-Section 101M Oppositions
- 7.2.2.1 Commencing the Opposition - Filing the Opposition Documents
- 7.2.2.2 Evidence and Evidentiary Periods
- 7.2.2.3 Finalising the Opposition
- 7.2.3 Oppositions to an Extension of Term of a Pharmaceutical Patent (Section 75(1) Oppositions)
- 7.2.3.1 Commencing the Opposition - Filing a Notice of Opposition
- 7.2.3.2 Filing the Statement of Grounds and Particulars
- 7.2.3.3 Evidence and Evidentiary Periods
- 7.2.3.4 Finalising the Opposition
- 7.2.4 Oppositions to Request to Amend an Application or Other Filed Document (Section 104(4) Oppositions)
- 7.2.4.1 Commencing the Opposition - Filing a Notice of Opposition
- 7.2.4.2 Filing the Statement of Grounds and Particulars
- 7.2.4.3 Evidence and Evidentiary Periods
- 7.2.4.4 Finalising the Opposition
- 7.2.5 Oppositions to Extensions of Time Under Section 223 (Section 223(6) Oppositions
- 7.2.5.1 Commencing the Opposition - Filing a Notice of Opposition
- 7.2.5.2 Filing the Statement of Grounds and Particulars
- 7.2.5.3 Evidence and Evidentiary Periods
- 7.2.5.4 Finalising the Opposition
- 7.2.6 Oppositions to Grant of a Licence (Regulation 22.21(4) Oppositions)
- 7.2.6.1 Commencing the Opposition - Filing a Notice of Opposition
- 7.2.6.2 Filing the Statement of Grounds and Particulars
- 7.2.6.3 Evidence and Evidentiary Periods
- 7.2.6.4 Finalising the Opposition
- 7.2.7 Disputes Between Applicants and Co-Owners (Directions Under Section17 and Determinations Under Section 32)
- 7.2.8 Entitlement Disputes (Applications Under Sections 33-36 and 191A)
- 7.3 Directions
- 7.3.1 Directions in Opposition Proceedings
- 7.3.1.1 Direction to Stay an Opposition Pending Another Action
- 7.3.1.2 Further and Better Particulars
- 7.3.1.3 Time for Filing Evidence in a Substantive Opposition
- 7.3.1.4 Time for Filing Evidence in a Procedural Opposition
- 7.3.1.5 General Conduct of Proceedings
- 7.3.1.6 Further Directions
- 7.3.2 Directions that an Application Proceed in Different Name(s) - Section 113
- 7.4 Opposition Documents, Requirements and Amendments
- 7.4.1 Notice of Opposition
- 7.4.2 Statement of Grounds and Particulars
- 7.4.3 Amending Opposition Documents
- 7.4.4 Filing of Opposition Documents
- 7.5 Evidence
- 7.5.1 Presentation of Evidence
- 7.5.1.1 Written Evidence and Declarations
- 7.5.1.2 Oral Evidence
- 7.5.1.3 Physical Evidence - Special Considerations
- 7.5.2 Admissibility of Evidence
- 7.5.3 Evidence Filed Out of Time
- 7.6 Production of Documents, Summonsing Witnesses
- 7.6.1 Requests for Commissioner to Exercises Powers Under Section 210(1)(a) & 210(1)(c)
- 7.6.2 Basis for Issuing a Summons
- 7.6.3 Basis for Requiring Production of Documents or Articles
- 7.6.4 Reasonable Expenses
- 7.6.5 Complying with the Summons or Notice to Produce, Reasonable Excuses
- 7.6.6 Sanctions for Non-Compliance
- 7.6.7 Schedule to Requests for Summons or Notice to Produce
- 7.7 Withdrawal and Dismissal of Oppositions
- 7.7.1 Withdrawal of an Opposition
- 7.7.2 Dismissal of an Opposition
- 7.7.2.1 Requests for Dismissal
- 7.7.2.2 Dismissal on the Initiative of the Commissioner
- 7.7.2.3 Reasons for Dismissal
- 7.7.3 Withdrawal of an Opposed Application
- 7.8 Hearings and Decisions
- 7.8.1 Setting Down Hearings
- 7.8.1.1 Setting of Hearing
- 7.8.1.2 Location and Options for Appearing
- 7.8.1.3 Hours of a Hearing
- 7.8.1.4 Hearing Fee
- 7.8.1.5 Who May Appear at a Hearing?
- 7.8.1.6 Relevant Court Actions Pending
- 7.8.2 Hearings Procedure
- 7.8.2.1 Overview of Proceedings
- 7.8.2.2 Adjournment of Hearings
- 7.8.2.3 Contact with Parties Outside of Hearing
- 7.8.2.4 Hearings Involving Confidential Material
- 7.8.2.5 Consultation with Other Hearing Officers
- 7.8.2.6 Hearings and the Police
- 7.8.3 Ex Parte Hearings
- 7.8.4 Natural Justice and Bias
- 7.8.4.1 Rules
- 7.8.4.2 Waiving of Objection of Bias by Standing by until Decision Issued
- 7.8.4.3 Bias as a Result of Contact with Parties Outside of Hearing
- 7.8.4.4 Bias as a Result of Other Proceedings Involving the Same Parties
- 7.8.5 Principles of Conduct
- 7.8.5.1 Lawfulness
- 7.8.5.2 Fairness
- 7.8.5.3 Rationality
- 7.8.5.4 Openness
- 7.8.5.5 Diligence and Efficiency
- 7.8.5.6 Courtesy and Integrity
- 7.8.6 Decisions
- 7.8.6.1 Written Decisions
- 7.8.6.2 Time for Issuing a Decision
- 7.8.6.3 Publication of Decisions
- 7.8.6.4 Rectification of Errors or Omissions in Decisions
- 7.8.6.5 Revocation of Decisions
- 7.8.7 Further Hearings
- 7.8.8 Final Determinations
- 7.8.8.1 Overview of Proceedings
- 7.8.8.2 Applicant Does Not Propose Amendments
- 7.8.8.3 Opponent Withdraws the Opposition
- 7.8.9 Quality
- 7.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations
- 7.9 Costs
- 7.9.1 Principles in Awarding Costs
- 7.9.2 Scale of Costs, Variation of the Scale
- 7.9.3 Awarding Costs, Taxation
- 7.9.4 Security for Costs
- 7.9.5 Exemplary Situations in Awarding Costs
- 7.10 The Register of Patents
- 7.10.1 What is the Register
- 7.10.2 Recording Particulars in the Register
- 7.10.2.1 Recording New Particulars in the Register
- 7.10.2.2 Change of Ownership
- 7.10.2.2.1 Assignment
- 7.10.2.2.2 Change of Name
- 7.10.2.2.3 Bankruptcy
- 7.10.2.2.4 Winding Up of Companies
- 7.10.2.2.5 Death of Patentee
- 7.10.2.3 Security Interests
- 7.10.2.4 Licences
- 7.10.2.5 Court Orders
- 7.10.2.6 Equitable Interests
- 7.10.2.7 Effect of Registration or Non-Registration
- 7.10.2.8 Trusts
- 7.10.2.9 False Entries in the Register
- 7.10.3 Amendment of the Register
- 7.11 Extensions of Time and Restoration of Priority
- 7.11.1 Extensions of Time - Section 223
- 7.11.1.1 Relevant Act
- 7.11.1.2 Subsection 223(1) - Office Error
- 7.11.1.2.1 Extensions under Subsection 223(1) to Gain Acceptance
- Annex A - Section 223(1) Extension of Time for Acceptance File Note
- 7.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
- 7.11.1.3.1 The Law
- 7.11.1.3.2 Subsection 223(2)(a) - Error or Omission
- 7.11.1.3.3 Section 223(2)(b) - Circumstances Beyond Control
- 7.11.1.3.4 Filing a Request under Subsection 223(2)
- 7.11.1.3.5 The Commissioner's Discretion
- 7.11.1.4 Subsection 223(2A) - Despite Due Care
- 7.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A)
- 7.11.1.6 Advertising an Extension - Subsection 223(4)
- 7.11.1.7 Extension of Time for an Extension of Term
- 7.11.1.8 Grace Period Extensions
- 7.11.1.9 Extension of Time to Gain Acceptance
- 7.11.1.10 Examination Report Delayed or Not Received
- 7.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
- 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
- 7.11.1.13 Person Concerned: Change of Ownership
- 7.11.1.14 Date of a Patent Where an Extension of Time is Granted to Claim Priority
- 7.11.2 Extensions of Time - Reg 5.9
- 7.11.2.1 Requesting an Extension of Time
- 7.11.2.2 Application of the Law
- 7.11.2.3 Justification for the Extension
- 7.11.2.4 Discretionary Matters
- 7.11.2.5 Period of an Extension
- 7.11.2.6 A Hearing in Relation to an Extension
- 7.11.2.7 Parties Involved in Negotiations
- 7.11.2.8 Review of a Decision to Grant or Refuse an Extension
- 7.11.2.9 "Out of Time" Evidence
- 7.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)
- 7.11.4 Restoration of the Right of Priority Under the PCT
- 7.12 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances
- 7.12.1 Section 70 Considerations
- 7.12.1.1 Pharmaceutical Substance per se
- 7.12.1.2 Meaning of Pharmaceutical Substance
- 7.12.1.3 Meaning of "when produced by a process that involves the use of recombinant DNA technology"
- 7.12.1.4 Meaning of "mixture or compound of substances"
- 7.12.1.5 Meaning of "in substance disclosed"
- 7.12.1.6 Meaning of "in substance fall within the scope of the claim"
- 7.12.1.7 Included in the Goods
- 7.12.1.8 First Regulatory Approval Date
- 7.12.2 Applying for an Extension of Term
- 7.12.2.1 Documentation Required
- 7.12.2.2 Time for Applying
- 7.12.2.3 Extension of Time to Apply for an Extension of Term
- 7.12.3 Processing an Application for an Extension of Term
- 7.12.3.1 Initial Processing
- 7.12.3.2 Consideration of the Application
- 7.12.3.3 Grant of Application for Extension of Term
- 7.12.3.4 Refusal of Application for Extension of Term
- 7.12.4 Calculating the Length of the Extension of Term
- 7.12.5 Patents of Addition
- 7.12.6 Divisional Applications
- 7.12.7 Oppositions to an Extension of Term
- 7.12.8 Relevant Court Proceedings Pending
- 7.12.9 Rectification of the Register
- 7.13 Orders for Inspection of non OPI Documents
- 7.13.1 Documents not-OPI by direction of the Commissioner - Regulation 4.3(2)(b)
- 7.13.2 Inspection of non-OPI Documents
- 7.14 Appeals AAT, ADJR, The Courts
- 7.14.1 Appeals to the Federal Court
- 7.14.2 AAT Review
- 7.14.3 Judicial Review (ADJR)
- 7.14.4 Other Court Actions Involving the Commissioner
- 7.14.5 Section 105 Amendments
- 7.15 Computerised Decisions
- 8. Superseded Legislation
- 8.1 Summary of Relevant Legislative Changes
- 8.2 General Approach to Examination
- 8.2.1 Restriction of the Report
- 8.2.2 Not All Claims Previously Searched and/or Examined
- 8.2.3 Law and Practice Differences
- 8.3 Amendments
- 8.3.1 Allowability of Amendments to Complete Specifications
- 8.3.2 Allowability Under Section 102(1)
- 8.3.3 Allowability Under Section 102(2) - General Comments
- 8.3.4 Amendments to a Provisional Specification
- 8.3.5 Opposition to Amendments - Standard Patents
- 8.4 Novelty
- 8.4.1 Introduction
- 8.4.2 Prior Art Information
- 8.4.3 Exclusions
- 8.4.4 Doctrine of Mechanical Equivalents
- 8.4.5 Basis of the "Whole of Contents" Objection
- 8.5 Inventive Step
- 8.5.1 The Statutory Basis for Inventive Step
- 8.5.2 Prior Art Base
- 8.5.3 Assessing Inventive Step in Examination
- 8.5.4 Common General Knowledge
- 8.5.5 Determining the Problem
- 8.5.6 Identifying the Person Skilled in the Art
- 8.5.7 Could the PSA have Ascertained, Understood, Regard as Relevant and Combined the Prior Art Information
- 8.5.7.1 Ascertained
- 8.5.7.2 Understood
- 8.5.7.3 Regarded as Relevant
- 8.5.7.3.1 Document Discloses the Same, or a Similar, Problem
- 8.5.7.3.2 Document Discloses a Different Problem
- 8.5.7.3.3 Age of the Document
- 8.5.7.3.4 Would the Person Skilled in the Art Have Used the Document to Solve the Problem
- 8.5.7.4 Does the Document Constitute a Single Source of Information
- 8.5.7.5 Could the PSA be Reasonably Expected to Have Combined the Documents to Solve the Problem
- 8.6 Innovative Step
- 8.7 Section 40 Specifications
- 8.7.1 Overview
- 8.7.2 What is the Invention?
- 8.7.2.1 General Considerations
- 8.7.2.2 Approach in Lockwood v Doric
- 8.7.2.3 Consistory Clause
- 8.7.2.4 Requirement for Critical Analysis
- 8.7.2.5 "Essential Features" of the Invention
- 8.7.3 Full Description - Best Method
- 8.7.3.1 Date for Determining Full Description
- 8.7.3.2 Can the Nature of the Invention be Ascertained?
- 8.7.3.3 Compliance with Subsection 40(2) is a Question of Fact
- 8.7.3.4 Enabling Disclosures
- 8.7.3.5 Effort Required to Perform the Invention
- 8.7.3.6 Different Aspects Claimed in Different Claims
- 8.7.3.7 Inclusion of References
- 8.7.3.8 Trade Marks in Specifications
- 8.7.3.9 Colour Drawings and Photographs
- 8.7.4 Claims Define the Invention
- 8.7.5 Claims are Fairly Based
- 8.7.5.1 General Principles
- 8.7.5.2 Sub-Tests for Fair Basis
- 8.7.5.3 Relation Between the Invention Described and the Invention Claimed
- 8.7.5.4 Only Disclosure is in a Claim
- 8.7.5.5 Alternatives in a Claim
- 8.7.5.6 Claiming by Results
- 8.7.5.7 Reach-Through Claims
- 8.7.5.8 Claims to Alloys
- 8.7.6 Provisional Specifications
- 8.7.7 Complete Applications Associated with Provisional Applications
- 8.8 Patentability Issues
- 8.9 Abstracts
- 8.10 Divisional Applications
- 8.10.1 Application
- 8.10.2 Priority Entitlement
- 8.10.3 Time Limits for Filing Applications
- 8.10.4 Subject Matter
- 8.10.5 Amendment of Patent Request - Conversion of Application to a Divisional
- 8.10.6 Case Management of Divisional Applications
- 8.11 Priority Dates and Filing Dates
- 8.11.1 Priority Date of Claims
- 8.11.2 Priority Date Specific to Associated Applications (Priority Dociment is a Provisional)
- 8.11.3 Priority Date Issues Specific to Convention Applications
- 8.11.4 Priority Date Issues Relating to Amended Claims
- 8.12 Examination
- 8.13 Modified Examination
- 8.14 Petty Patents
- 8.15 National Phase Applications
- 8.15.1 Key Features of the Legislation
- 8.15.2 National Phase Preliminaries
- 8.15.3 Formality Requirements
- 8.15.4 Priority Sources
- 8.15.5 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination
- 8.15.6 Amendments During Examination
- 8.16 Convention Applications
- 8.16.1 Convention Country Listing
- 8.16.2 Convention Country Status Change
- 8.16.3 Basic Application Outside 12 Month Convention Period
- 8.16.4 Convention Priority Dates
- 8.17 Patent Deed
5.6.13.2 Re-examination process
Key Legislation:
Patents Act:
- s27 Notice of matters affecting validity of standard patents
- s40 Specifications
- s70 Applications for extension of patent
- s97 Re-examination of complete specifications
- s99 Statement by applicant of patentee
- s101H Patentee statements
- s101K Relevant proceedings and re-examination
- s104 Amendments by applicants and patentees
- s106 Amendments directed by Commissioner: patents
- s107 Amendments directed by Commissioner: applications for standard patents
- s112 Pending proceedings
- Chapter 9 Re-examination of standard patents
- Chapter 9A part 2 Examination, re-examination and opposition-innovation patents; re-examination of innovation patents
Patents Regulations:
- reg 9.3(1) Copy of report on re-examination
- reg 10.2(1) Commissioner to consider and deal with requests for leave to amend
- reg 22.15A Certificate of verification and corrected translation
On this page
- Consider whether re-examination is warranted
- Considerations of re-examination timeliness
- Intention to Re-examine Letter
- Re-examination considerations:
- Re-examination report:
Consider whether re-examination is warranted
Re-examination is performed under the supervision of the supervising examiner whom is responsible for assigning cases within a section. This includes re-examination initiated by:
third party requests;
withdrawn oppositions;
section 27 notices;
an internal quality review process; and/or
new prior art located after acceptance or grant.
Re-examination must be conducted for third party requests and either an adverse or non-adverse report must issue.
In all other circumstances mentioned above, re-examination is conducted only if warranted and with agreement of the supervising examiner.
Where re-examination was initiated by either an internal quality review process or where new prior art was located after acceptance or grant, a decision should also be made within the examination section, and with agreement of the supervising examiner, as to whether re-examination is warranted. In these circumstances, Oppositions must be consulted before proceeding with re-examination.
Considerations of re-examination timeliness
It is preferable that re-examination is undertaken by an examiner who is not the original examiner. However, the re-examination should be assigned to whomever is best placed to complete the task within the Customer Service Charter timeframe (see 3.2 Customer Service Charter (Timeliness Standards)). Consequently, there may be situations where the original examiner is asked to undertake the re-examination, particularly if that person is best qualified to understand the technology.
Where an internal quality review has been finalised with a finding that could jeopardise the validity of an accepted application, the re-examination report needs to be issued within 8 weeks from the date of the finalisation the finding.
Intention to Re-examine Letter
The Commissioner must not re-examine a patent where relevant proceedings are pending (s97(4) and s101K(2)). Where relevant proceedings are initiated after re-examination has commenced, the re-examination process must not continue (s97(5) and s101K(3)).
For re-examination of granted patents, an ‘intention to re-examine’ letter must be sent to the patentee at least 7 days before the re-examination report is issued. This letter is for the purposes of satisfying the requirements of s112. No letter is required for an application for which a patent has not been granted.
Where a third party requests re-examination, Patent Oppositions will create an “Intention to re-examine letter” in RIO and send it out to the patentee to inform them that the Commissioner intends to re-examine the patent unless advised within seven (7) days of the date of this letter that relevant proceedings are pending. The re-examination report must not be issued before the seven-day period has expired.
However, if the Commissioner initiates re-examination, the system will generate an “Intention to re-examine letter” in RIO and send it out to the patentee to inform them that the Commissioner intends to re-examine the patent unless advised within seven (7) days of the date of this letter that relevant proceedings are pending.
In both of these cases, the re-examination report must not be issued before the seven-day period has expired. If no reply to this letter is received within this time, it will be considered that there are no relevant proceedings, and the re-examination task will be released by either Patent Oppositions or the system respectively and assigned to the relevant section’s re-exam work basket.
Provided this letter has been sent, examiners should not include any further requests for s112 information in their re-examination reports, or request such information prior to completing the s104 voluntary allowance form (if appropriate) at the conclusion of the re-examination process. When completing the form, the box relating to relevant proceedings pending should be checked (on the condition that the intention to re-examine letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings).
For re-examination tasks that pre-exist in PAMS and re-examination associated with s70 – Extension of Term, these tasks must be completed in PAMS. In the case that multiple third-party/owner-initiated requests for re-examination are received for a single application, the first request will be completed in RIO, and the second request onwards will need to be completed in PAMS. For PAMS related re-examination tasks, please refer to the information below.
Before re-examining a granted patent, examiners need to check the file to see if there is any indication of court action. Where a third-party requests re-examination, Oppositions will enquire whether relevant proceedings are pending prior to the case file being referred to the relevant examination section. Therefore, for third-party re-examination requests, Oppositions will send the letter before the file of documents is forwarded to the examination section. However, if the Commissioner initiates re-examination, examiners will need to check the file. There may already be a statement that there is no court action, for example, in the case where there is a recent application for an extension of term under s70. If there is no indication of a court action on the file, examiners must write to the patentee and inform them that the Commissioner intends to re-examine the patent, unless advised within 7 days that relevant proceedings are pending. The re-examination report must not be issued before the seven-day period has expired. An example of the text of the letter to be used is shown in Annex B, see Annex B – Intention to Re-Examine Letter.
The examiner is to advise Oppositions (via email to ohl@ipaustralia.gov.au) once the “Intention to Re-Examine Letter” is sent and provide the relevant patent number and the date the letter was issued.
Provided this letter has been sent, examiners are not to make further request for s112 information in their re-examination reports, or prior to completing any s104 voluntary allowance form at the conclusion of the re-examination process. This is regardless of whether a first report or subsequent non-adverse report is being issued. When completing the s104 voluntary allowance form, the box relating to relevant proceedings pending should be checked after reviewing that the intention to re-examine letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings.
It is noted that under the Federal and Supreme Court rules, the Commissioner has to be informed of any court action on a patent. However, there have been instances where the parties have neglected to inform the Commissioner of a court action.
Re-examination considerations
Scope of the consideration
During re-examination, consideration is given to:
- whether the specification does not comply with s40(2), s40(3), or s40(3A);
- whether the invention is not patentable under s18(2) or s18(3), as applicable; and
- whether the invention, so far as claimed in any claim:
- is not novel;
- does not involve an inventive step or an innovative step, as applicable;
- is not useful; or
- is not a manner of manufacture.
Examiners need to also note that prior use can be considered for novelty and inventive/innovative step purposes. Consideration of prior use is applicable where the examiner becomes aware of the information in the ordinary course of examination, or where evidence is provided to the Commissioner.
Prior to 15 April 2013, the only grounds available for consideration during re-examination were novelty and inventive/innovative step. The Raising the Bar Act 2012 expanded the grounds available for consideration during re-examination. Therefore, the expanded grounds are considered for re-examination reports issued on or after 15 April 2013. This is regardless of when the patent application was made, or the patent granted. It is noted that consideration of the expanded grounds applies whether the report is an initial report or subsequent adverse report.
Consideration of Section 40 and Usefulness
During re-examination, the considerations of s40 grounds and usefulness are the same as those considered during examination. The date of the examination request will determine how these considerations are made.
Examination Request Filed Before 15 April 2013 for standard patent applications, standard patents or innovation patents
In this circumstance, the s40 issues to be considered during re-examination are:
- full description, including best method of performance;
- clarity and succinctness; and
- fair basis.
Usefulness should be considered only in terms of whether the claimed invention achieves the promised benefit (see 5.6.8.19 Useful (specific, substantial, and credible use)).
Examination Request Filed On or After 15 April 2013 for standard patent applications, standard patents or innovation patents
In this circumstance, the s40 issues to be considered during re-examination are:
- clear enough and complete enough disclosure, including best method of performance;
- clarity and succinctness;
- support; and
- omnibus claims.
Usefulness is to be considered according to the procedures outlined in 5.6.8.19 Useful (specific, substantial, and credible use).
Re-examination request
A request for re-examination must meet the following requirements:
Identify the documents on which the re-examination is to be based and state the relevance of each document;
If a document is not available in the Office, a copy of that document must accompany the request;
If the document relied on is not in English, a translation must be provided. For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided; and
Include evidence of the date and place of publication of each document (if this is not apparent from the document itself).
If the request does not satisfy these requirements, then re-examination cannot take place.
A person who has made a request may, by filing a notice in writing, amend, or withdraw the request before re-examination commences.
Material considered during re-examination
Information previously considered during examination does not provide an appropriate pretext for re-examination unless the information is part of a request by the patentee or a third party or, following an internal quality review. The documents considered in re-examination will most likely be those of the prior art base that the Commissioner considers necessary such as:
any published material that the Commissioner becomes aware of through Office staff;
any published material referred to by an opponent in a statement of opposition;
any material identified by a person requesting re-examination;
any material as informed by a court directing re-examination; or
any material from the prior art base which consists of information made publicly available only through the doing of an act anywhere, whether in or out of the patent area.
In addition, examiners are to check if there are any FERs that were not available at the time of examination and consider whether these are relevant.
When determining the relevance of documents or other material, for example brochures, consideration should be given to whether the information is publicly available (see 5.6.4.1 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)).
Material may also be provided in the form of a declaration or as hearsay evidence. 7.5.2 Admissibility of Evidence provide some guidance in this regard.
Where examiners are in doubt as to whether material meets the necessary prior art requirements, they should consult Oppositions.
Where re-examination initiated by a withdrawn opposition is considered warranted, examiners are not to automatically review all documents listed in the statement of grounds and particulars. Where the relevance of the documents is stated, examiners should consider this and focus on those documents where there is reason to believe they could be citations. Where there is no relevance indicated, examiners would not normally have reason to believe that any of the documents could be a citation. However, in the case of non-patent literature, the title of a document could suggest it is relevant. Finally, if the statement only lists a small number of documents without indicating their relevance, examiners are to review those documents since the opponent seems to have been selective and therefore the documents could be particularly relevant.
Incorrect Translation of Documents
Note that the information in this part only applies to translations filed after 25 September 2019.
Where a document accompanying a re-examination request is not in English, the person making the request is required to provide a translation (see Re-Examination Request above).
In this situation, examiners should determine from the outset whether they have any doubts about the accuracy of the translation of a document. Examiners are not required to determine whether the document is a citation, but whether the translation appears to be incorrect (for example, lack of continuity). If examiners consider that the translation is incorrect, they should first consult Oppositions. If Oppositions are in agreement, then the person who made the re-examination request should be asked to file either:
- a corrected translation of the document and a certificate of verification for the corrected translation; or
- a certificate of verification for the translation.
Examiners should email Oppositions (ohl@ipaustralia.gov.au) asking for a corrected translation and/or certificate of verification to be obtained from the person who made the re-examination request under the provisions of reg 22.15A. The email should clearly identify the relevant document(s). Oppositions will issue a notification to the person and create a diary entry of the 2-month response date.
The re-examination process should in the meantime be placed on hold. Where no response is received in 2 months, re-examination should be carried out on the basis of the other documents identified in the re-examination request. Where the ‘incorrect’ translation is the only document, examiners should consult Oppositions.
Re-examination in light of the Traditional Knowledge Digital Library (TKDL)
The TKDL (http://www.tkdl.res.in/) is an Indian digital knowledge repository of traditional knowledge which was established in 2001 as a collaboration between the Council of Scientific and Industrial Research (CSIR) and the Department of Ayurveda, Yoga, Naturopathy, Unani, Siddha and Homeopathy. It includes information about medicinal plants and their formulations as used in traditional Indian systems of medicine. In 2019, the database contained information on about 250,000 medicinal formulations.
IP Australia and TKDL entered into an access agreement in 2011. Under the agreement, IP Australia has access to the database for searching purposes. Additionally, TKDL staff can advise IP Australia of TKDL documents they consider relevant to the patentability of an application that has been advertised as accepted. The notification will be sent to Oppositions in the form of either an email or a letter.
The email/letter will be addressed to the Assistant General Manager (Oppositions) and will, at least, contain the Australian patent/application number, relevant patent claim numbers and the TKDL Database Accession number.
Oppositions will acknowledge the notice of relevant documents has been received. The Commissioner will then decide if re-examination is warranted, based on the TKDL documents. If it is decided that a re-examination is not necessary, TKDL still have the option of requesting re-examination under s97(2).
Re-examination report
Initial report
Since the Commissioner will initiate re-examination voluntarily only if an adverse report will issue, the report will only refer to documents which give rise to an objection.
In contrast, where the patentee or a third-party requests re-examination, the Commissioner must re-examine the patent. In these circumstances, the report will address all documents provided in the request and should include positive or negative statements regarding each claim. It is possible that the report will be positive in respect of every claim. However, examiners need only report in detail on those documents found to be relevant, or discussed as being relevant by the person making the request. Any documents not considered to be relevant and not discussed as being relevant by the person making the request may be grouped together and addressed in terms of a positive statement.
A re-examination report should state that the application or patent has been re-examined, outline the findings and, in the case of an adverse report, give the applicant or patentee a period of 2 months from the date of the report to respond.
The initial re-examination report must take into account any information or submissions on file, including any provided prior to acceptance, or in evidence filed during opposition. Areas of doubt should be resolved, wherever possible, before issuing a report. The report must give sufficient detail of the nature of the objection and the examiner's consideration of any available information to enable the applicant or patentee to address the issues in as few responses as possible. An adverse report should explicitly identify each claim that is rendered either not novel or lacking an inventive/innovative step.
Examiners are to review whether an intention to re-examine letter was sent to the applicant or patentee. Provided this letter was sent and the patentee is aware of the on-going requirement to advise of any proceedings, examiners are not to make further request for s112 information in their re-examination reports. This is regardless of whether a first report or final non-adverse report is being issued.
The standard required for an adverse re-examination report is the same as the third report standard.
All re-examination reports, both adverse and non-adverse, must be supervised by a senior examiner (see Supervision of Reports below). Examiners are to send the re-examination report to the applicant or patentee as per normal and provide Oppositions with the case number and actual date of sending the re-examination report.
While the majority of re-examination tasks are able to be completed in RIO, re-examination tasks that already exist in PAMS and re-examination tasks associated with s70 (Extension of Term) will need to be actioned in PAMS accordingly. For these PAMS re-examination tasks, please note the following:
- For re-examination of patent applications prior to grant, examiners are to ensure that a bar to grant is in place by completing the “Defer of grant details” box in the “Examination Details” screen in PAMS.
- All re-examination tasks in PAMS are done as an “Edit Ecase” since there is no re-examination category task in PAMS. The appropriate template must be used.
- If after re-examination considerations, the decision is not to re-examine, then a case note must be placed on PAMS case file with a subject stating exactly ‘Decision not to re-examine’. This is to ensure the efforts of re-examination are captured in our reporting systems.
Applicant’s or patentee’s response after initial report
Statement under Section 99 or Section 101H
Where an adverse re-examination report has been issued, the applicant or patentee may, within a period of 2 months after the day on which the report was sent:
file a statement under s99 (or s101H for innovation patents) that disputes the findings of the report;
amend the complete specification either voluntarily or as a result of a direction under s106 or s107 to amend; or
do both of the above.
Copy of the Statement under Section 99 or Section 101H
A copy of the statement under s99 or s101H must be given to:
an opponent in the case of re-examination under s97(1) of an application which is under opposition;
a person who requests re-examination if that person is not the patentee; and
the court, if a prescribed court directed the Commissioner to re-examine the patent under s97(3) or s101K(1).
Subsequent adverse re-examination reports
If an applicant or patentee does not respond to a re-examination report, the Commissioner is likely to set the matter for hearing with a view to refuse the application or revoke the patent (see 5.6.13.4 Refusal to grant or revocation following re-examination). However, in some circumstances, the Commissioner may choose to issue a subsequent re-examination report, rather than head directly to refusal or revocation. These include:
where an applicant or patentee has made a reasonable attempt to respond to the initial re-examination report (either by way of submissions or proposed amendments), but where there are still some issues outstanding. In this situation another re-examination report can be issued.
Where a subsequent re-examination report is based on a s99 or s101H statement by the applicant or patentee that was not accompanied by a request for leave to amend the complete specification, the report should address all the arguments raised in the statement.
Where a subsequent re-examination report is to be issued and the applicant or patentee has requested leave to amend the complete specification, then the practice of Proposed Amendments are Allowable or Proposed Amendments are not Allowable below should be followed as appropriate.
where an applicant or patentee advises the Commissioner in writing that they intend to prosecute the application and can provide satisfactory reasons why they have been unable to meet the 2-month response deadline, despite taking all reasonable steps to do so.
Consequential requests for further time to respond to a re-examination report will be considered by Oppositions. If appropriate, Oppositions will issue another re-examination report with a new 2-month response time.
If subsequent re-examination reports are issued, similar considerations as outlined in Initial Report above apply. In particular, the report must be supervised by a senior examiner or supervising examiner depending on the circumstances and Oppositions consulted before the report is issued (see Supervision of Reports below).
However, issuing subsequent re-examination reports would not be appropriate in the following situations:
- in the case of re-examination directed by a prescribed court (s97(3) and s101K(1)); and
- in the case of re-examination during an opposition. In this circumstance, the Assistant General Manager (Oppositions) should be consulted prior to issuing a subsequent re-examination report.
Timeframe for actioning an applicant’s or patentee’s response to a re-examination report
In accordance with the Customer Service Charter Timeliness guidelines, examiners are to action a response to a re-examination report within 8 weeks from receiving the response.
There is no specific legislative provision for the Commissioner to issue further re-examination reports in response to a submission, or to extend the time to respond to a re-examination report (except under s223). Instead, the subsequent re-examination report is a completely new re-examination action, re-starting the re-examination process and with its own 2-month response deadline.
The subsequent re-examination report provides the applicant or patentee with another opportunity to overcome objections raised in the previous re-examination report. However, it is only issued in the understanding that the applicant or patentee is genuinely attempting to address the objection as expeditiously as possible.
Re-examination is intended as an efficient legislative means to dispose of invalid claims. It is inconsistent with this scheme to have protracted debates on the same issues over multiple re-examination reports.
Proposed amendments are allowable
Where a response to a re-examination report includes a request for leave to amend the specification, the Commissioner must report on the request according to s104(2) and reg 10.2(1). Where the proposed amendments are allowable and overcome the issues raised in the re-examination report, the procedure concluding the re-examination to be followed is 5.6.13.3 Completion of re-examination.
Where the amendments are allowable, but do not overcome the objections outlined in the re-examination report, examiners should consider issuing a subsequent re-examination report. The report must be supervised by a senior examiner or supervising examiner depending on the circumstances and Oppositions consulted before the report is issued (see Supervision of Reports below).
Issuing subsequent re-examination reports after proposed amendments have been filed is distinctly different from issuing further examination reports on a standard patent application or innovation patent after proposed amendments have been filed. For further examination reports, the Commissioner should report as if each proposed amendment had been made. In contrast, for the case of a report in a subsequent re-examination action, there is no legislative basis for reporting as if each proposed amendment had been made.
Therefore, in this situation any subsequent adverse re-examination report should:
formally maintain any outstanding issues that were raised in the previous report and which were not overcome by the applicant's or patentee's statement under s99 or s101H (by reproduction of the text of the objections, or by reference to the report); and
acknowledge that, although the proposed amendments are allowable, they (and any statement under s99 or s101H) do not overcome the issues raised in the previous re-examination report, giving appropriate explanations.
Leave to amend should not be formally granted until the issues raised in the re-examination report have been overcome, and no further issues arise as a result of the proposed amendments. Such practice:
expedites the re-examination process as much as possible; waiting allowance of the amendments would interrupt the process, as a subsequent report could not be issued and new amendments proposed until the previous amendments had been advertised and allowed; and
removes the need for the applicant or patentee to file a new request for leave to amend after each re-examination report is issued (with the accompanying fee).
Proposed amendments are not allowable
Where a response to a re-examination report includes a request for leave to amend the specification, and the amendments are not allowable, the report on the request for leave to amend under s104(2) and reg 10.2(1) should proceed as a separate action from the re-examination process. Examiners need to contact Patent Oppositions (ohl@ipaustalia.gov.au) with the application number and the service request number associated with the re-examination task to request that a separate s104 task be created in RIO. Thus, any adverse report on the allowability of the voluntary amendments should not comment on the substantive issues that were raised in the re-examination report. A subsequent re-examination report should not be dispatched until the allowability issue has been resolved. In particular, examiners should not issue a re-examination report on the specification as proposed to be amended, if the amendments are not allowable.
Where an adverse report on the amendments is issued, the applicant or patentee is given 1 month in which to respond and is informed that if no response is received within this time, the Commissioner may set the matter for a hearing to consider concurrently:
refusal or revocation of the patent or patent application on the basis of the re-examination report; and
refusal of the request for leave to amend on the basis of the adverse report under reg 10.2(1).
If a response to an adverse report on the allowability is received and a subsequent adverse report is warranted, then a further month should be given for a response. The adverse report should also include the above comments.
Once allowable amendments have been filed, the procedures outlined in Proposed amendments are allowable above should be followed.
It is to be noted that Oppositions is to be consulted before any adverse report on the allowability of the voluntary amendments is issued.
Supervision of reports
Re-examination reports are to be supervised by a senior examiner or, if the report is done by a senior examiner, it is peer-reviewed by another senior examiner. This applies to both adverse and non-adverse reports at the initial and second report stages.
All re-examination reports, both adverse and non-adverse after submission of the task (apart from third and higher adverse reports (see below)) will be automatically assigned to the selected senior/supervising examiner for supervision/quality assurance (QA). If the senior/supervising examiner does not approve, they can send the task back to the examiner for correction. Once the report is approved and the QA task is submitted by the senior/supervising examiner, the report will be assigned to Patent Oppositions for editorial review. For re-examination tasks completed in PAMS, an email must be sent to Patent Oppositions (Email to ohl@ipaustralia.gov.au) advising that supervision is complete. If the re-examination report is approved by Patent Oppositions, it will be sent out to the applicant or patentee.
Where a third adverse report is to be issued, this is to be considered by a supervising examiner. If the supervising examiner agrees that there are valid issues and that the arguments have reached an impasse, the case should be referred to the Assistant General Manager (Oppositions) to determine whether the matter is best progressed by way of a hearing.
Fourth adverse reports dealing with substantive problems must be reviewed by Oppositions before being dispatched, to determine whether refusal or revocation action should be initiated instead.
It should be noted that it is the overall number of reports that have been issued since the initial re-examination report that is counted, regardless of whether they were strictly adverse re-examination reports, or adverse reports on s104 amendments filed in response to a previous re-examination report.
Once supervision of the re-examination report is complete, Oppositions is to be advised by email (ohl@ipaustralia.gov.au). Oppositions will perform an editorial review to ensure that all reports are broadly consistent in style. After making any changes directed by Oppositions, the examiner is to dispatch the report in the usual manner. However, Oppositions must also be advised of the case number and actual date of the report was issued. Oppositions will create, where appropriate, a diary entry of the 2-month response date and send a copy of the report to persons who are entitled to receive this report.
An outline of the process, showing the major steps, is provided in the flowchart at Annex A - Re-Examination Processing. (Note that this flowchart does not comprehensively include all variations and their steps).
A re-examination checklist is provided at Annex C – Re-Examination Checklist.
Copy of the re-examination report sent to opponent or third party
Following supervision of a re-examination report, examiners should send the re-examination report to the applicant or patentee as per normal. Examiners, and any senior or supervising examiners, who send out reviewed re-examination reports, should also email Patent Oppositions (email to ohl@ipaustralia.gov.au) and provide the following details:
- case number; and
- date that the report was issued.
Oppositions will send a copy of the re-examination report to:
the opponent following re-examination under the circumstances of opposition; or
the person who requested re-examination after grant of the patent, if that person is not the patentee.
This copy of the report will also be sent if the report is issued immediately following review by Patent Oppositions.
A similar practice is to be followed if a subsequent re-examination report is issued in light of the patentee's statement under s99 or s101H. The third party will be advised by Oppositions that the Commissioner has decided to re-examine the patent again and sent a copy of the new re-examination report. Sending the third party a copy of the initial re-examination report is a statutory requirement (reg 9.3(1)). Subsequent reports are initiated by the Commissioner and are therefore not covered by this regulation. They are, however, sent to the third party as a matter of courtesy, as are any amendments or statements under s99 (or s101H) filed by the patentee.
Any material sent to the third party should be accompanied by a covering letter (generated by Oppositions) informing them that:
this material is being sent to them as a matter of courtesy only (or as a consequence of reg 9.3(1)); and
that they have no right to any further involvement in the re-examination process (such as filing submissions for the examiner to consider, to appear at any refusal or revocation hearing, or right of appeal of any decision the Commissioner may subsequently make), but that the Commissioner will endeavour to forward to them any relevant correspondence concerning the re-examination process.
Where there are proposed amendments, the opponent needs to be additionally informed that they have the right to oppose the amendments under s104(4) once leave to amend has been granted and advertised in the Official Journal. However, they should be monitoring the Journal themselves to ensure that they know when leave has been granted and not relying on the Commissioner to advise them when advertisement will occur.
Amended Reasons
Amended Reason | Date Amended |
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Page updated to include additional guidance on process to be followed to allow reporting system to capture data relating to decision not to re-examine |
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Corrected typos on pages |
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Clarified language around re-exam tasks to be completed in PAMS in the Initial Report section |
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Published for testing |