IPA patent 5.6.12.3-pso---report-requirements — IP Australia Patent Manual of Practice and Procedure – 5.6.12.3 PSO - Report Requirements

Also in this Chapter: 5.6.12.1 Requests for PSO 5.6.12.2 PSO - Search and examination procedure ​​​​​​​ 5.6.12.4 Response to the PSO Key Legislation: Patents Act: s43A Preliminary Search and Opinion s45 Examination Related Chapters: Annex - Preliminary Search and Opinion (PSO) PAMS Reference Guide - PSO On this page Novelty and Inventive Step Patentable Subject Matter Other Issues PSO Form Completion Novelty and Inventive Step The reporting requirements for novelty and inventive step are the same as apply to examination of a standard patent application under s45. ‘Whole of contents’ novelty objections should be included under the heading ‘Novelty and Inventive Step’. Note that information made available through the doing of an act may also be considered for novelty and inventive step purposes. ​​​​​​​ Patentable Subject Matter The reporting requirements for patentable subject matter (manner of manufacture) are the same as apply to examination of a standard patent application under s45. Where some of the claims define subject matter that is not patentable under Australian law, and these were not searched, the opinion should clearly indicate the claims that have not been searched and provide reasons why a search was not conducted.​​​​​​​ Other Issues The following issues should also be considered (in accordance with the practices for examination under s45): Lack of unity – the opinion should identify all inventions and indicate the invention(s) searched; Clear enough and complete enough disclosure; Support; Clarity; Usefulness; Omnibus claims; and Multiple applications. Examiners are not required to report on: Entitlement; Formalities relating to the patent request, complete specification or the Budapest Treaty ; and Postponement of acceptance.​​​​​​​ PSO Form Completion The PSO form should be completed in accordance with the instructions provided in Annex - Preliminary Search and Opinion (PSO) . The level of detail required is the same as for a report under s45.