8.2.3 Law and Practice Differences

Also in this Chapter:

• 8.2.2 Not All Claims Previously Searched and/or Examined

• 8.2.3 Law and Practice Differences

In some situations, an objection raised in a FER has an equivalent under Australian law, however the reasoning provided to support that objection is inconsistent with Australian law.  In these circumstances, examiners will need to draft their objection independently for the Australian context.

Law and practice differences that examiners should be aware of include:

• Under Australian law, the prior art information against which inventive step is assessed is restricted to information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant.  This restriction does not apply in other countries.

• Certain claims may not have been examined because of excluded subject matter, however the subject matter concerned may be considered patentable under Australian law.  For example, EPO practice in relation to stem cells and embryos may differ from that applicable in Australia.

• Where a lack of support objection is raised in a FER this may, but does not necessarily, correspond to fair basis or full description problems under Australian law.

• Examiners should always check the publication date of any document cited in a US FER as it may not be citable under Australian law.

• Non-patent literature which is published after the relevant priority date of the Australian application is not applicable under Australian law and therefore should not be cited. However, in the case of patent documents, examiners should check for the existence of a corresponding family member or AU family equivalent (including WO documents that designate AU) with an earlier publication date.

• For US FERs, documents cited in the 'Double Patenting' section of the report may be relevant prior art under Australian law.
• The FER may raise issues that are not sustainable or relevant under Australian law, such as claim formatting issues specific to the EPO.
• Some issues regarding the scope of the claims in a FER are applicable under Australian law and in these situations the FER may be directly referenced. However, where claim construction practices differ, for example product by process claims, additional explanation will be required.
• If the FER reasoning is based on a particular interpretation of terms which is not clear from the report, examiners should expand the reasoning in their objection to clarify the issue.
• Where a FER has findings based on common general knowledge, examiners should assume in their first report that the assertion as to what is common general knowledge in the foreign jurisdiction is also applicable to Australia.  If this is subsequently refuted by the applicant or attorney, then the practice outlined in 2.5.2.1.7 Considerations at Further Reports applies.
• In confirming positive findings for means plus function claims in US FERs, examiners should be mindful of the requirement in the US for the scope of such claims to be limited to the embodiments described.