5.6.2.8 Further Report Considerations

Also in this Chapter:

• 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 Translation of specifications (requirements for certification, poor translations)
• 5.6.2.6 Obtaining priority documents
• 5.6.2.7 Report Dispatch, Correction of Report etc.​​​​​​​
• 5.6.2.9 Convention applications

Key Legislation:

Patents Act:

• s45 Examination 
• s49 Acceptance of patent request: standard patent  
• s49A Postponing acceptance of patent request: standard patent  
• s102 What amendments are not allowable?  
• s104 Amendments by applicants and patentees  

Patents Regulations: ​​​​​​​

• reg 13.4 Prescribed period: acceptance of request and specification
• reg 13.5 If applications lapse

Related Chapters: 

• 4.3.3 Additional Searching,
• 5.6.4.6 Identifying and raising citations

On this page

• Overview
• Maintaining objections:
  • No amendments, only arguments
  • Additional searching
• ​​​​​​​Third and Subsequent Adverse Reports; Withdrawing Objections After Two Adverse Reports.

Overview

Subsequent examination reports after the First report are considered “Further reports” or “Furthers”. If a statement of proposed amendments has been filed in response to an examination report, examiners are to report upon the specification as proposed to be amended and report whether those amendments are allowable (see chapter on Amendment allowability).

A further report must be comprehensive and generally involves:

• Maintaining objections raised in the previous report which have not been fully overcome by the proposed amendments and/or submissions.  This may be done by reference to an earlier report provided the outstanding issues are made clear; and/or
• Raising new objections which have arisen as a result of the amendments made to the specification.  ​​​​​​​

Maintaining objections

At further report stage, more detail may be required in the report to specifically address arguments or issues raised by the applicant.

Where an objection is maintained in the face of meaningful submissions, the wording of the report must be such that the applicant is in no doubt that a legitimate point made in the submissions has been taken into account.

Where a response indicates that the applicant’s understanding of any issue, such as the scope of the claims or of a particular term, differs from that of the examiner, it will be necessary to discuss these issues in greater depth when maintaining an objection. Examiners are not expected to reassess previous objections that have not been addressed in the applicant’s response. A simple reference to the previous objection will suffice.

Dependent claims that were dealt with in a general manner in an earlier report, and which have not been addressed in the applicant’s response, do not have to be investigated further, that is, a general objection may still apply to those dependent claims.

No amendments, only arguments

Often an applicant’s response will have no proposed amendments, only providing an argument in rebuttal to the Examiner’s objections. The argument may be convincing enough to shift the balance of probabilities where the examiner is doubtful of the applicability of their objections (see Balance of Probabilities chapter). An examiner unsure of the correct course of action should refer the matter to a senior examiner in the first instance.

Note that for discussion of best practice in identifying citations in further reports, refer to 5.6.4.6 Identifying and raising citations.​​​​​​​

Additional searching

Additional searching may also be required at further report stage depending on the proposed amendments (see 4.3.3 Additional Searching).

Third and Subsequent Adverse Reports; Withdrawing Objections After Two Adverse Reports

It is important that objections are raised and maintained appropriately. To this end:

• All third and subsequent adverse reports (including reports on voluntary requests to amend under s104) are reviewed by a supervising examiner. A statement to this effect must be included in each third and subsequent adverse report (see PERP code [P90]). ​​​​​​​This function can be delegated to senior examiners where the supervising examiner considers it appropriate;
• Where an issue remains after three adverse reports and without substantial amendments being proposed, Patent Oppositions should be consulted on the further progress of the case, including whether to set the matter for hearing with the intent to refuse the application; and
• Where an objection has been raised and maintained for 2 reports and the examiner believes, on the basis of the applicant’s submissions alone or submissions with insubstantial amendments, that the objection should be abandoned, then a supervising examiner or delegated senior examiner will need to be consulted before the objection can be withdrawn. This is intended to ensure that objections are not withdrawn without sufficient justification. However, where the examiner considers that the proposed amendments fully address the grounds of objection, no further consultation is required.