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?  

Related Chapters:

• RIO - Bilateral Application Tasks

• RIO - Processing Bilateral Application Tasks

• 6.4.8.2 Annex B - Fiji Search Report 2

On this page

• Introduction

• Preparation of further advisory opinion

  • Considering allowability of amendments

  • Finalising the opinion

Introduction

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 and/or amendments to this office for a further advisory opinion.

Upon receiving any submissions and/or amendments, 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 alert folder of the examiner who originated the search report and advisory opinion.

Preparation of further advisory opinion

The search examiner will prepare a further advisory opinion (see completed example in 6.4.8.2 Annex B - Fiji Search Report 2). 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; that is, 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 and/or amendments.

Considering allowability of amendments

The sole fresh consideration of a further opinion is the allowability of amendments under 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 6.4.8.2 Annex B - Fiji Search Report 2.

Finalising the opinion

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.

The examiner and/or the section quality controller will closely check the report for any errors before the examiner clicks SUBMIT in Intelledox. Once submit is clicked, the templates are automatically sent to the PCT Unit for final processing.