FOR IP PROFESSIONALS

Responding to an examination report

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Adverse examination reports typically relate to an application not meeting the requirements of the Patents Act.

The next step depends on the issues raised in the report. In some cases the objections raised mean that you will not be able to obtain a valid patent or, if overcome, that you will end up with such weak patent protection that it is not worth continuing. This does not mean that you cannot commercialise your product successfully but you will need to find other strategies to protect your position in the market. In other circumstances, you can resolve the problems by amending your specification or claims but you will still need to ensure that the patent protection obtained meets your essential business requirements.

Keep an eye on the time

You only have a limited period of time to decide what to do. You will find details about this in our report but if you decide to continue your application or Innovation Patent the time limits are:

  • Standard patents: You have 21 months from the date at the top of the first adverse report to resolve any issues or your application will lapse. This  includes dealing with issues raised in any subsequent report. Note that there are extra fees if you file responses after 12 months, so you will usually want to settle all the issues within this period.

Important: If you request examination of your application on or after 15 April 2013, you will only have 12 months from the date of the first adverse report to resolve all the issues or your application will lapse, but response fees will be no longer payable.

  • Innovation Patents: You have 6 months from the date at the top of the first adverse report to resolve all the issues including any issues raised in a subsequent report or your patent will cease.

Understanding the examination report

To help you understand our examination reports, we have listed below some of the statements (or objections) which might appear in your report together with a very basic explanation of what they mean and how you might resolve the problem.

If your examination report includes an objection you don't understand please phone the examiner on the number listed in the report. The examiner can explain the issue involved, but is not able to advise you on how best to respond or to draft claims on your behalf. Issues raised during examination can be legally complex and your response could have a major impact on the viability of your invention in the market.

So, if in doubt you should seek professional advice.

Objections

Objections you may come across in an examination report include:

"Your complete specification does not end with a suitable claim or claims ..."

You will have to rewrite your claims so that they properly define your invention. Most likely your claims are stating objectives or advantages, rather than defining the features that make up the invention.

"Claims ... are not fairly based on what you have described in the specification..." or "Claims ... do not adequately define the invention described ..."

The invention defined in your claims is not consistent with what you have described elsewhere in your specification. You may have said in the description that a certain feature is essential to how the invention works but you have left it out of the claims. You can usually overcome this type of objection by changing the claims so they are consistent with the description.

"Claims ... are not clear because ..."

This is one of the most common objections. There are many causes, including for example:

  • the words used do not make any logical or grammatical sense
  • the words used are ambiguous
  • the same words are used inconsistently in the claims

You can usually correct this by carefully choosing the right words to use in the claims.

"In your specification you have claimed more than one invention ..."

Your claims define more than one invention. This will usually happen only if you have more than one independent claim, and this often arises because the claims do not properly define your invention. If so, you can usually overcome the objection by a careful revision of the claims.

If you have described more than one invention, and you want to have patent protection for all of them, you can file one or more divisional applications. For more information get a copy of our information sheets on Patents of Addition and Divisional Applications.

"Your application is not for a manner of manufacture within the meaning of section 18(1)(a) of the Patents Act ..."

This means the subject matter of your invention is not suitable for a patent. You will need to carefully consider the nature of your invention and the way it is claimed.

"The invention you have defined in claim ... does not involve an inventive step ...."

The examiner considers that the invention claimed is obvious or lacks an inventive step over what was known before. We will give reasons for the objection and details of any particular publications relied on. These may include documents that illustrate what was common knowledge in the particular trade or technical field of your invention.

Again you may be able to change your claims to overcome this objection or you may give reasons why you think it is not correct.

"The invention you have defined in claim ... does not involve an innovative step ...." (Innovation Patent)

The examiner considers that the difference between the invention claimed and what was known before does not make a substantial contribution to the working of the invention. We will give reasons for the objection and details of any particular publications relied on. These may include documents that illustrate what was common knowledge in the particular trade or technical field of your invention.

Again you may be able to change your claims to overcome this objection or you may give reasons why you think it is not correct.

"The invention you have defined in claims ... is not novel when compared with ..."

The invention claimed is not new (novel), because:

  • it was published in a document before the priority date of your claim; or
  • it was published after the priority date of your claim in an Australian patent  specification that has an earlier priority date.

If the examiner takes this objection, it is because all or almost all the features of your claim can be found in one form or another in the document cited, and any feature which is not in that document is considered something which is not important to your invention.

You will most likely have to change your claim to introduce from the description important features of your invention that are not disclosed in the citation. Alternatively, if you believe that a feature in your claim that is not present in the citation is an important feature, it may be that you can persuade the examiner to withdraw the objection.

If all the important features of your invention, as described in your specification, are found in the citation you will not be able to obtain a patent.

If you decide not to continue

If you decide not to continue with the examination process you do not have to respond to the examination report or take any other action. You application will lapse, or your Innovation Patent cease, at the end of the time period indicated above.

Amending your patent application

Occasionally you may want to make changes to your request form or the notice of entitlement. Usually, you will want to make changes to your complete specification.

You can change the specification by proposing amendments, but you are not permitted to make changes that result in the claims defining something that wasn't disclosed in complete specification when it was originally filed. 

Important: If you request examination on or after 15 April 2013, and wish to change your complete specification on or after that date, you will not be permitted to make changes that result in the description or claims describing or defining something that wasn't disclosed in your complete specification when it was originally filed. 

You make changes by sending us a statement of proposed amendments together with substitute page(s). A statement of proposed amendments is a list that identifies pages to be replaced. You should file the substitute page plus one copy of the page, and on this copy show where you have made the proposed changes.

The statement of proposed amendments should be written on a separate sheet, be signed and dated, and clearly indicate your patent application number. An example is included at the end of this fact sheet. The items on the statement should be numbered sequentially and the numbering should follow on in any subsequent statements.

If you think an objection is unreasonable

You may not always have to amend your specification. You can send us a letter setting out the reasons why you think an objection is not warranted. This may convince the examiner that the objection should be withdrawn.

A simple assertion is not sufficient. You should give reasons why you think the examiner has misunderstood some part of your invention or incorrectly applied the law.

After you respond

The examiner will reconsider your application taking into account your proposed amendments and any written submissions. If there are no objections remaining, the examiner will accept your application and you will be notified. Otherwise, we will send you another report listing any remaining issues and those that may have resulted from the proposed amendments. This will generally take about 3 weeks. You will then have to consider whether to file further proposed amendments or submissions to deal with the remaining issues.

If any fees on your application have not been paid the examiner will not consider your response until you pay them.

Resolving disputes

If you disagree with the examiner's report, and your submissions do not convince the examiner to withdraw the objections, you can ask the Commissioner of Patents to make a formal decision. You must pay a fee and the Commissioner will delegate an IP Australia staff member with no previous involvement to look at your application and consider your submissions.

If you are not satisfied with the delegate's decision you are entitled to file an appeal with the Federal Court of Australia. You should seek legal advice before initiating court action.

Seek Professional Advice

Patent matters can involve complex legal issues and it may be in your best interests to consult a patent attorney, solicitor experienced in intellectual property matters, or your business adviser.

You can read more on our IP professionals and other sites page. 

Example applicant's response with amendments

The following example is based on the sample specification presented in our Patents Application Kit. It assumes that the examiner has reported that the invention of original claims 1, 3 and 4 is not new.

Sample Response:

30 September 1999

10 South Street

Eastville NSW 2013

To: Commissioner of Patents

PO Box 200

Woden ACT 2606

Re: Australian Patent Application No. 12345/97

Sir/Madam,

I refer to the examiner's first report of 21 July 1999, and request that my application be amended under section 104 according to the statement of proposed amendments attached.

I have deleted original claims 3 and 4 and rewritten claim 1 so that it now corresponds to original claims 1 and 2. Corresponding changes have also been made to the description.

I submit that the document cited by the examiner does not disclose a fastener with a projection and engagement clip as now defined in claim 1.

Also, my fastener has the advantage that it does not require any holes in the edge of the sheet.

A Smith

Sample Statement of Proposed Amendments:

Application No. 12345/97, by A Smith

First Statement of Proposed Amendments

1. Page 1 Delete and insert new page 1 attached hereto in duplicate.*

2. Page 4 Delete and insert new page 4 attached hereto in duplicate.*

A Smith

30 September 1999

*Note: There should be two copies of each new page. Mark one copy in red to show the changes.

Sample Description

BED SHEET TENSIONER

This invention relates to improvements in devices for tensioning of bed sheets

For many people the lack of smoothness in the lower sheet on a bed causes discomfort which can result in lack of sleep. There have been many proposals to tension a bed sheet, but these have all required that some fitting or other be provided on the bed sheet to fasten some form of retaining strap. For example, one previous device proposes buttonholes or similar apertures along the length of the sheet and an elastic strap having a button at each end to fasten underneath the mattress to keep the bed sheet tensioned. These proposals have the disadvantage that a standard bed sheet bought from a shop cannot be used until it has been modified by including button holes (or other fastening arrangements) on the sheet.

These problems are overcome by the present invention, which provides a bed sheet tensioning device comprising a resilient strap with releasable fasteners at each end, each of the releasable fasteners being adapted to fasten the strap to the cloth material of a bed sheet by gripping the cloth material without any part of the fasteners being included on the cloth material, wherein each of the releasable fasteners comprises a plate having a projection with an enlarged head and an engagement clip thereon, the clip adapted to engage the projection under the enlarged head with the cloth material of the bed sheet between, such that the fastener is engaged onto the bed sheet.

Sample Amended Claims (these must be on page/s separate to the description)

The claims defining the invention are as follows:

  1. A bed sheet tensioning device comprising a resilient strap with releasable fasteners at each end, each of the releasable fasteners being adapted to fasten the strap to the cloth material of a bed sheet by gripping the cloth material without any part of the fasteners being included on the cloth material, wherein each of the releasable fasteners comprises a plate having a projection with an enlarged head and an engagement clip, the clip adapted to engage the projection under the enlarged head with the cloth material of the bed sheet between, such that the fastener is engaged onto the bed sheet.
  2. The bed sheet tensioning device of claim 1 wherein the resilient strap is a spring enclosed in a cloth sleeve.
  3. The bed sheet tensioning device of claim 1 wherein the resilient strap is made of rubber.

A Smith 30 September 1999

Last Updated: 03/4/2014

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