The 12-month period for gaining acceptance runs from ‘the date of the first report’ (reg 13.4), that is, the date that appears on the report. The report is taken to have been given to the applicant on that date. There is no provision in either the Act or Regulations to withdraw a report and replace it with another report, or for the date of a report to be changed after issue.

A report issues when it is placed in the case file as a completed document (that is, with the document status of ‘FILED’) and cannot be withdrawn and replaced by a new report. Reports are subsequently uploaded into AusPat overnight and become visible on eDossier the following day.

Excess Claims Fees and Invitation to Pay

For patent applications where examination is requested on or after 1 October 2024, an excess claim fee may be imposed at the time of the issuance of the first adverse report (or if the application proceeds immediately to acceptance at first report stage the excess claim fees will be calculated as part of the acceptance fee). In reckoning the number of claims in a specification at first examination stage, regard is had to any requests to amend the specification at the time of the first adverse report. The number of claims for reckoning the amount of the fee is the number that would be in the specification if each proposed amendment had been made.

An invitation to pay excess claim fees will issue at the time of the first adverse report if the number of claims that would be in the specification exceeds 20 claims. The invitation will provide one month for payment with a consequence of non-payment being that the application will enter a state of lapse. If the fee is paid within 12 months of the date of the first report, then the application is restored without the need for an extension of time under s223.

Examiners must enter the total number claims on file before them for consideration at the first report stage and each subsequent further report stage into the examination report template to enable the automatic generation of an invitation to pay fees at the first report stage, and to enable final reckoning at acceptance based on maximum number of claims examined throughout the entire examination process. An examiner should not continue to examine an application following a response from the applicant unless any payable excess claim fees are paid.

It should be noted that an invitation to pay an excess claims fee will only issue at the first report stage or at acceptance. Any increase in claims during further prosecution relevant to an excess claims fee, while recorded in the system, does not trigger an invitation to pay and subsequent adverse further report stages.

The excess claims fee at first examination report and the adjusting amount payable at acceptance are prescribed in items 203A and 213 in clause 2 of Schedule 7 to the Patents Regulations respectively.

For applications where examination is requested before 1 October, excess claims will only be payable at acceptance stage as set out under Reg 23.54 (2).

Consideration of Standard Examination Requests

For examination requests made from 1 October 2024, applicants will be notified approximately six months ahead of expected commencement of examination of their application. This will be based on work front levels at each section level and would vary given the delays in some subject areas. The current response times for each area of technology are published on our external website.

Noting this lead time is intended to allow applicants time to make any desired amendments in anticipation of first examination report, examiners should ensure applications are not examined until this six-month notification window has passed unless explicitly requested by the applicant.

In situations where it may be prudent to assess an application within this window then the examiner should reach out to the applicant’s representative allowing them an opportunity to make any desired amendments before a first report is issued.

Expedited requests

Expedited requests including those filed through the Patent Prosecution Highway route from 1 October 2024 will be an exception to the six months heads up notice.

As an interim measure to support applicants, for the first six months following commencement of fee changes on 1 October 2024, examiners should arrange to contact the applicant’s representative in situations where the specification has more than 20 claims. This is to offer them the opportunity to amend their application if desired. Applicants should be offered a 1-month timeframe to submit their amendments. The time taken by the applicant to provide amendments will add to the 8 weeks completion timeframe commitment for expedited requests.

Refunds and waivers

Generally, no refunds or waivers would apply for excess claims fee unless there is an administrative error on IP Australia’s part in determining the fee payable.

Refunds/waivers will not apply in situations where the examiner has reserved opinion on one or more claims for reasons as set out under 3.3.3 Reserving Opinion and Restricting Search.

However, for extenuating circumstances, the Fee Refunds and Waivers delegate can make determination on a case-by-case basis based on information provided by the applicant or their representative.

Delay in receipt of the report

Where there has been a delay in the receipt of the report by the applicant or attorney, it may be possible to extend the time for acceptance. Any request for an extension of time should be referred to the supervising examiner, who will consult with Patent Oppositions.

In general, an extension of time is not allowed until it is needed, that is, an extension is not needed until the normal period for gaining acceptance is about to expire. An extension of time can also be allowed (without a formal request being made) where an application lapses due to expiry of the period for acceptance and there is clear evidence of Office error (see the scenarios discussed below).

In these circumstances, a case note should be added to the file and the supervising examiner informed of the situation. If the supervising examiner agrees that s223(1) is applicable, the relevant form at 7.11 Annex A - Section 223(1) Extension of Time for Acceptance File Note should be completed and the case referred to the Assistant General Manager (Oppositions). Further guidance on the treatment of extensions of time in accordance with s223 is provided in 7.11 Extensions of Time and Restoration of the Right of Priority.

Report Sent to Wrong Address

Examiners should be careful to ensure that all reports are addressed correctly. If it is apparent that a report has been sent to the wrong address, then the report will stand, but the grounds to invoke the provisions of s223(1) will be regarded as established. CEG will forward a copy of the report to the correct address, together with a covering letter explaining the circumstances and advising the applicant or attorney that, if needed, an extension of time under s223(2) to the period prescribed in reg 13.4 for acceptance of the request and specification will be allowed, commensurate with the delay.

In these circumstances the applicant or attorney is not to be asked to supply a statutory declaration to corroborate that the report was not received.

Report not Received

There can be circumstances where the report was correctly addressed but the report has gone missing (likely lost in the mail). In these circumstances, the applicant or attorney is to be advised that an extension of time to gain acceptance may be sought under s223(2)(b) (circumstances beyond control), with a statutory declaration being required to establish that the report was not received at the correct address.

Report not Despatched

Where it is clear that an examination task was submitted, but the corresponding report not despatched (likely due to a system error), the report is regarded as issued on the date that it was dated. A copy of the report should be despatched to the applicant or attorney (if they have not already obtained a copy from eDossier) together with a covering letter explaining the circumstances. The grounds to invoke the provisions of s223(1) will be regarded as established. The applicant or attorney should be advised that an extension of time under s223(1) will be allowed if it is not possible to gain acceptance in time.

Correction of Reports

Warning: Examination reports with the document status of ‘FILED’ MUST NOT be deleted from the PAMS Ecase. However, reports with the status of ‘DRAFT’ may be deleted, as these are working documents that have not been issued.

Where examiners become aware that a completed report with the document status of ‘FILED’ contains a substantial error, for example if an objection has been overlooked, or an objection is recognised as wrongly taken, the appropriate corrective action is to immediately issue a further report (that is, second, third etc).* The report should also include an apology as appropriate.

Where examiners are aware of other minor inconsistencies or omissions in a completed report, they should consult a senior examiner as to whether it is necessary to issue a further report, or if a phone call to the applicant or attorney will suffice.

See also PERP codes [A80] and [A81] for cases where correction of a report is required as a result of quality review. Further information on issuing corrective actions as a result of a quality review Finding can be found in the Quality System and Security Manual.

*Note that when issuing the further report, examiners should ensure that the report is correctly numbered.

Amended Reasons

Amended Reason	Date Amended
Page updated to include information relating to excess claims fees and issuance of an invitation to pay due to fee changes coming into effect 1 October 2024	20 Sep 2024
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.2.7 Report Dispatch, Correction of Report etc.

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