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6.4.5 Search Report and Advisory Opinion

Date Published

On completing the search the examiner will complete a Search Report and Advisory Opinion form (see completed example(s) at Annex A). The report and opinion is completely of an advisory nature.

The report and opinion will be offered under Australian patent law concepts.

Patentability opinion will be limited to the manner of manufacture consideration of Section 18(1)(a). This limitation should be established in the written opinion - note the expression "...patentable to the extent that it satisfies Section 18(1)(a) of the Patents Act 1990" at item 1 of Annex A.

Novelty opinion will be based on the considerations for Section 18(1)(b)(i), of the Patents Act 1990. This should also be established in the written opinion - note the expression "...novel, as required by Section 18(1)(b)(i) of Patents Act 1990" at item 2 of Annex A.

It is important that the essence of both expressions above is included in the opinion in order that the Fijian Administrator-General, who has been forwarded a copy of the Australian Patents Act 1990, understands precisely the scope of the opinion offered.

In preparing the opinion it will be necessary to fully explain each objection since the Fijian Administrator-General may not have ready access to other sources of technological or patent law advice. The quoting of case law should be avoided; instead there should be a clear statement of the principles involved and their application in the present situation.

It should be clearly stated in the opinion that the invention as defined by the search statement (which may draw on suitable claims, if any) is the subject of the opinion.

Where:

 

  • the subject matter or the nature of the application is such that it is not possible to arrive at a meaningful search statement or to conduct a meaningful search, then this will be fully explained in the opinion.
  • more than one invention is present this will be identified in the search statement and in the opinion. Citations found, if any, in each search will be discussed in relation to each relevant invention.
  • there is no objection to patentability, as is expected in most cases, a simple statement to this effect is sufficient.
  • there is an objection to patentability, full explanation is required.
  • there is no objection to want of novelty, sufficient explanation should be given for an understanding of why novelty does exist, e.g. by showing the integer of a combination of the present invention not found in the closest prior art or a discussion of other differences.
  • there is an objection to want of novelty, the completed examples of the annexes indicate the level of explanation required.
  • the search examiner is not an authorized officer, upon completing the report and opinion form, the search file is referred to the responsible officer for supervision.

 

The search examiner (and/or the authorised officer) will closely check the report for any errors before SUBMIT is clicked in Intelledox and the template is automatically sent to the PCT Unit for final processing (see 6.6.6 Final Processing). There is no requirement for reports to be signed, and to avoid any confusion in the mind of the applicant resulting from differing practices, reports should not be signed.

A Search Information Statement (SIS) will be generated by the template in Intelledox.

Amended Reasons

Amended Reason Date Amended

Published for testing
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