Change in Practice - Case Management of Divisional Patent Applications

25 Mar 2011

The changes included the addition of a paragraph to the bottom of First Examination Reports. Where the application is a Divisional application and at least one objection is based on the same grounds objected to in the examination of the earlier patent application, the paragraph could read:

"Objections 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 200xxxxxxx. Please note that if a response overcoming those objections is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above."

We have received a number of requests from customers to move this paragraph to the front of the report in order to make it more visible and ensure it was seen as soon as the report is received, so immediate action can be taken to respond in time.

As of 18 March 2011, the practice examiners are to follow has been changed in line with these customer requests. This paragraph will now appear on the first page of the Examiner's report, directly under the introductory paragraph and trust this now better suits the needs of our customers.

Last Updated: 14/3/2013

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