6.7 Other Countries

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Introduction

The following provides guidance for examiners on the considerations for Tonga and Papua New Guinea (PNG) bilateral applications. Examiners should contact Oppositions for assistance in preparing search and/or examination reports on low volume applications.

Tonga and PNG bilateral tasks

On the basis of memoranda of understanding between IP Australia and Tonga and PNG IP Offices, we conduct search and examination similarly for both jurisdictions. Of particular note, relevant sections of the Industrial Property Act of Tonga include sections 3, 4, 5, 10, 11, 12, 13 ,14, 16 and 17.  Relevant sections of the PNG Patents and Industrial Designs Act include sections 12, 13, 14, 15, and 26.

Assigning the task

Presently, bilateral application tasks are not assigned to examiners in RIO, as would be the case for most high-volume examination tasks. Instead, the PCT Unit will advise the relevant section head(s) that a bilateral request has been received, to which the receiving section will allocate the task to a suitable examiner. Please see RIO - Bilateral Application Tasks for more information on navigating Bilateral Application Tasks in RIO.

Search and Examination

Examiners should conduct search and examination as they would for an international piece of work that requires a search (see 6.1 International Searching). There are no differences in searching practices compared to international work.

Writing the report

The following refers to specific practices for Tongan and PNG bilateral examination reports. See RIO - Bilateral search and examination reports for full guidance on completing bilateral search and examination reports.

Previous search results

Examiners should not rely solely on Foreign Examination Reports (FERs) when conducting their examination. Although the current application may be related to another that has been previously examined either by IP Australia or other IP offices, a new and independent search must be conducted. However, examiners may wish to refer to search strategies used in related cases to inform and guide their own search process.

Novelty and inventive step statements

While the examination is done based on the PCT guidelines, examiners do not make references to the PCT articles in the report. Instead, they should discuss novelty and inventive step (positive and negative statements) without mentioning the regulations/acts. 

For example:

Incorrect: ‘Claim 1 is not novel and therefore does not comply with PCT Article 33(2).’

Correct: ‘Claim 1 is not novel.’

Search Statement

Either:

  • Recite claim 1 in the report or all the claims if they are succinct.

  • Write a ‘refer to claims’ statement.

Note: SmartIQ (Intelledox) will not create a new page for this section if the search statements go over one page.

Box E (Additional Observations)

Box E (Additional Observations) needs to be used for answering the following questions which Tongan office has specifically requested of IP Australia:

(a) Advise whether the patent application is or is not a discovery, scientific theory and mathematical method.

(b) Advise whether the patent application is or is not a scheme, rule or method for doing business, performing purely mental acts or playing games.

(c) Advise whether the patent application is or is not a method for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body.

Finalising the task

After submitting the report in SmartIQ (Intelledox), examiners should notify the PCT team (MDB-PCT) who will ensure the report is despatched.

Amended Reasons

Amended Reason Date Amended

Updating content to provide more explicit guidance for examiners working on Tonga (and PNG) bilateral application tasks.

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