How to respond to an examination report

Here's how to respond if you receive an examination report. 

At a glance

  • An examination report highlights issues with your application
  • There are many ways to overcome these issues
  • Calendar
    You have just 12 months to overcome the issues (and any others that arise)
  • Respond to your report via online services

What is an examination report?

An examination report identifies issues with your patent application. The examiner's findings are detailed in the report with ways to overcome them.

What are common issues?

  • Your invention isn't new or inventive
  • Your invention isn't suitable for patenting
  • Issues with claims - you've tried to claim more than one invention, the claims aren't clear, or aren't supported by the description.

What to do if you receive an examination report

  1. Read the examination report carefully to understand the issues raised, and how to overcome them.
  2. Respond as soon as possible. Any issues raised in our examination reports need to be resolved within 12 months from the date of the first examination report. If you don’t resolve all issues within the time limit, your application will lapse.

    You can respond by making changes to your specification (normally the claims) and/or making arguments as to why you disagree with the content of the report.

    If you respond to the report with amendments or arguments and your changes don’t overcome the issues (or they create further ones), we'll issue another report. You must still overcome any issues within 12 months from the date of our first report, regardless of the number of subsequent reports you receive.
  3. If you have questions, contact the person who examined your application. Their name and contact details will be provided on the report.
    NOTE: In the case where a company has submitted your application, we can only speak with an authorised person,  so be sure the right person makes the call.
  4. Submit your changes via online services.

Respond via online services

How to overcome issues in your report

How you respond will depend on the issues highlighted in your report. Most can be overcome by
making amendments to your claims
 to better reflect your invention, and how it's different from what already exists. If you don't agree with the findings, you can submit a letter via online services to explain why you disagree.

There are several issues that can be identified:

The examiner has done a search and found that all, or almost all, of the important features of your claim already exist. We'll provide you with the document where the earlier invention was found.

This means that your claim isn't new because it was published:

  • In a document before the priority date of your claim
  • After the priority date of your claim in an Australian patent specification that has an earlier priority date.

You'll most likely have to change your claim to include important features that are mentioned elsewhere in your specification and are not disclosed in the citation.

Alternatively, if you believe that a feature in your claim that isn't 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 won't be able to obtain a patent.

The examiner considers that the invention claimed isn't different enough to what already exists.

We'll give reasons for the objection and provide details of any documents that show your invention is common knowledge in the particular trade or technical field.

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

If your examination report says that your application is not for a manner of manufacture within the meaning of section 18(1)(a) of the Patents Act, it means the subject matter of your invention isn't suitable for a patent.

You'll need to carefully consider the nature of your invention and the way it's claimed.

It's likely your claims are stating objectives or advantages instead of defining the features that make up your invention.

You'll have to rewrite your claims so that they properly define your invention.

How to write specifications

The examination report will say one of the following:

  • Claims ... do not adequately define the invention described ...
  • Claims ... lack support under subsection 40(3) because...

This means the invention defined in your claims isn't consistent with what you've described elsewhere in your specification. Often, the problem is that you've said in the description that a certain feature is essential to how the invention works, but then you haven't mentioned this feature in the claims.

You can usually overcome this type of objection by changing the claims so they're consistent with the description.

How to write specifications

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

  • Words used don't make any logical or grammatical sense
  • Words used are ambiguous
  • Same words are used inconsistently in the claims.

You can usually correct this by changing the words of your claims to be more precise, correct and consistent.

How to write specifications

This usually means that you've tried to make more than one independent claim. This often arises because the claims don't properly define your invention. If so, you can usually overcome the objection by a careful revision of the claims.

If you've described more than one invention, and you want to have patent protection for all of them, you can file one or more divisional applications.

Seek professional advice

If you need help to overcome issues with your application, you should consider seeking professional legal advice. 

Engage an IP attorney