Responding to an examination report

You will usually receive an adverse examination report if your patent application does not meet legislative requirements.

What you decide to do next will depend on the issues raised in the report.

In some cases you can resolve the problems by amending your specification or claims. However, you will still need to ensure that the patent protection obtained meets your essential business requirements.

In other cases the issues raised may mean that you will not be able to obtain a valid patent or, even if you overcome these issues, 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.

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. Your application will lapse at the end of the time period provided in the report.

Keep an eye on the time

You only have a limited period of time to respond to an examination report. The timeframe will depend on the type of patent you are applying for.

Standard patents

Any issues raised in our examination reports need to be resolved within 12 months from the date of our first examination report (for applications filed before April 2013, the timeframe is 21 months, however there are extra fees if you file responses after 12 months).

If you respond to the report with amendments or arguments which don’t overcome the issues or create further ones, we will issue a further report. However, regardless of the number of subsequent reports, you will still need to overcome any issues within 12 months from the date of our first report (or 21 months for applications filed before April 2013).

If you don’t resolve all issues within the time limit your application will lapse.

Innovation patents

Any issues raised in our examination reports need to be resolved within six months from the date of the first report.

As with standard patent applications, regardless of the number of subsequent reports, you will still need to overcome any issues within six months from the date of our first report.

If you don’t resolve all issues within the time limit, your application will lapse.

Understanding the examination report

To help you understand our examination reports, we have provided below common statements (or objections) along with basic explanations of what they mean and how you might resolve them.

If your examination report includes an objection you don't understand, you can phone the examiner on the number listed on the report. The examiner will be able explain the issue involved, however they are not able to advise you on how best to respond to the report, 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. If in doubt, you should consider seeking professional advice.

Common objections raised in examination reports

‘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. It is likely your claims are stating objectives or advantages, rather than defining the features that make up your invention.

‘Claims ... are not fairly based on what you have described in the specification...’ or ‘Claims ... do not adequately define the invention described ...’ or ‘Claims … lack support under subsection 40(3) because…’

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 not mentioned this feature in 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:

  • 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. 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.

‘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 ....’ (standard patent)

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 of 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 not important to your invention.

You will most likely have to change your claim to include important features that are mentioned elsewhere in your specification and not disclosed in the citation. Alternatively, if you believe that a feature in your claim that is not present in the citation is important, you may be able to 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.

Amending your patent application

One way to overcome objections raised in the examination report is to make amendments to your application. Usually this means making changes to your complete specification. However, you may occasionally need to make changes to your request form or the notice of entitlement.

When amending your specification, you are not permitted to make changes that result in the description or claims defining something that wasn't disclosed in your specification when it was originally filed.

To make changes you need to send us:

  • a statement of proposed amendments that identifies the pages you want to replace
  • the new pages, together with a copy of the page showing where you have made the changes.

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

An example statement of proposed amendments is included at the bottom of this page.

Arguing your case if you think an objection is unreasonable

You may not always have to amend your specification. Another way to overcome objections raised is to 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.

What happens after you respond

The examiner will reconsider your application taking into account any proposed amendments and any written submissions.

If there are no objections remaining, the examiner will accept your application. We will then send you a notice of acceptance.

If there are still outstanding objections we will send you another report, generally within three weeks. The report will list any issues remaining from the last report, or any that may have resulted from the proposed amendments.

You will then have a further opportunity to file further amendments or arguments to deal with the remaining issues.

You will need to make sure you are up-to-date with any fees on your application. If any fees have not been paid, the examiner can’t consider your response until you pay them.

Example of a response with amendments

The following example assumes that the examiner has reported that the invention as defined in the original claims 1, 3 and 4 is not new.

Sample response

30 September 2015

10 South Street

Eastville NSW 2013

To: Commissioner of Patents

PO Box 200

Woden ACT 2606

Re: Australian Patent Application No. 2014234567

Sir/Madam,

I refer to the examiner's first report of 21 July 2015, 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. 2014234567, 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 2015

*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 2015

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 one of our staff members 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 starting court action.

Last updated: 
30 May 2016