6.4.6 Further Advisory Opinion

Also in this Chapter:

• 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​​​​​​​

• 6.4.7 Final Processing

• 6.4.8 Annexes

Key Legislation:

Patents Act:

• s102 What amendments are not allowable?  

The Fijian Administrator-General may have conveyed to the Fijian applicant the results of the search report and advisory opinion prepared by this office. This will almost certainly be the case where the Administrator-General makes an adverse determination in respect of the Fijian application. The applicant may respond by making submissions and/or proposing amendments. The Administrator-General may convey these submissions/amendments to this office for a further advisory opinion.

Upon receipt of any submissions/amendments in this office the PCT Unit will:

• acknowledge receipt to the Fijian Administrator-General,
• scan the documents in the ECase,
• make an alias and place it in the examiner’s alert folder who originated the search report and advisory opinion.

The search examiner will prepare a further advisory opinion (completed example(s) see Annex B). This will not involve any further searching regardless of the introduction of new subject matter or any broadening in scope to the invention as previously established. The opinion will follow Annex B in levels of explanation and subject matter, i.e. in again addressing patentability (to the extent of manner of manufacture) and novelty, under Australian patent law concepts. The opinion will also recognise and discuss the submissions/amendments.

The sole fresh consideration of a further opinion is that of allowability of amendments, as would prevail under the Australian patent law concepts. The Fijian Act allows amendments "provided that no extension or enlargement of any exclusive privilege before acquired shall be affected by such amendment." This implies that no broadening of the scope of the monopoly is allowable.

Allowability of amendments should be based primarily on the considerations for Section 102(1) of the Australian Patents Act 1990. At the first opinion stage a search statement will have been drafted drawing on the description, drawings and suitable claims, if any, of the specification as filed. Amendments will be considered not allowable if, as a result of amendment, the specification would claim matter not in substance disclosed in the specification as filed. A contrast of the search statement of the first opinion with a notional search statement following amendment may assist the determination. A full explanation of amendments not considered allowable, and a brief explanation for allowable amendments, will be made. Again the scope of the opinion will be indicated by an expression such as "...allowable under Section 102(1) of the Patents Act 1990" as shown at item 1 of Annex B.

Where the search examiner is not an authorized officer, upon completing the further opinion form the search file is passed to the responsible officer for supervision.

Following preparation of the search report in Intelledox the examiner (and/or the section quality controller) will closely check the report for any errors before the examiner clicks SUBMIT in Intelledox and the templates are automatically sent to the PCT Unit for final processing.