IPA patent 5.6.16-annex-a---procedural-outline-for-full-examination-of-a-standard-patent-application — IP Australia Patent Manual of Practice and Procedure – 5.6.16 Annex A - Procedural Outline for Full Examination of a Standard Patent Application

Also in this Chapter: 5.6.1 Relevant Dates, Definitions, Legal Standards, and Other Prescribed Matters (e.g. Publication) 5.6.2 Factors to consider before commencing examination 5.6.3 The Specification and Claims to Examine ; 5.6.4 Citations: Prior art base and construction of prior art 5.6.5 Novelty, Whole of Contents, and Secret Use 5.6.6 Inventive Step 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40) 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture) 5.6.9 Acceptance, Grant, and Refusal of Applications 5.6.10 Divisional applications ​​​​​​​ 5.6.12 Preliminary search and Opinion (PSO) 5.6.13 Re-examination 5.6.14 Secret cases and applications involving associated technologies (i.e. nuclear weapons) 5.6.15 Innovation Formalities and Innovative Step ​​​​​​​ 5.6.17 Annex B - Indicators of Special or Different Considerations 5.6.18 Annex C - Applicant and Inventor Details as Shown on PCT Pamphlet Front Page 5.6.19 Annex D - Example of PCT Pamphlet Front Page​​​​​​​ Related Chapters: RIO - Processing National Examination Tasks Note : The order of these steps is not mandatory and may be varied as appropriate. First Report 1. Determine the type of application as procedures may vary, e.g. divisional, additional, national phase etc. 5.6.10 Divisional Applications 5.6.11 Patents of Addition 5.3.1.1 Formalities required and assessed at filing (National Phase Preliminaries) 2. Check that the application is in force if the date of the patent is more than 4 years ago. 5.6.2.2 Application in a state of lapse? 3. Check that a request for examination has been made. 5.6.2.1 Request for Examination 4. Check the case file for any matters pertaining to examination or any other outstanding actions. 5.6.2 Factors to consider before commencing Examination 5. Check the patent request (where applicable): proper authorisation nominated person a legal person title address for service. 5.3.3.2 Specific Requirements for the patent request 5.6.2.9 Convention Applications 6. Check entitlement. 5.4.2 Statement of Entitlement 5.6.2.9 Convention Applications 7. If a Convention application, check: prescribed foreign country application in time details in accord with the patent request/notice of entitlement priority documents (where applicable) filed in time first made in prescribed foreign country certified copy translation. 5.6.2.9 Convention Applications 8. Check to see whether any amendments have already been filed. Examination includes the consideration of any amendments filed in anticipation of an examination report. 5.6.3.1 Consideration of Amendments made prior to Examination 5.7.1.3 When can amendments be requested ? 9. Check formal requirements. 10. Read the claims and, if necessary, the description to get a broad understanding of the scope of the invention: determine whether the claims define a manner of manufacture, or are objectionable under sec 50(1). 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture) 11. Read the complete specification and determine: what is the admitted prior art what is the problem to be overcome whether it meets the requirements of sec 40(2). 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s.40) 5.5 Construction of Specifications, Claims, and Claim types 12. Construe the claims, determine their scope and note: whether they define one invention whether they meet the requirements of sec 40(3) and sec 40(3A) 5.5 Construction of Specifications, Claims, and Claim types 5.6.3.2 Claims directed to a single invention (Unity) 13. Review classification. See Classification Chapter 14. Determine the search strategy, if necessary. Check for FERs. 4 Searching 3.3.2 Use of FERs (earlier search and examination reports) 15. Conduct the search, if necessary, using appropriate search tools. 4 Searching 16. When conducting the search, or reviewing FERs, consider: novelty, including "whole of contents" inventive step and other sec 18 matters. 5.6.5 Novelty, Whole of Contents, and Secret Use 5.6.6 Inventive Step 17. Check if any material has been filed under sec 27. 5.6.4.5 Third Party Notifications 18. Check for multiple applications claiming the same invention and obtain case files of these. 5.6.9.10 Double patenting, Multiple Applications - s.64(2), 101B(2)(h) 19. Complete the Search Information Statement, if necessary. 4.6 Recording the Search Details 5.6.4.6 Identifying and raising citations 20. Prepare the report, ensuring that all important objections are raised. Submit the report for supervision, where necessary. 3.3.2 Use of FERs (earlier search and examination reports) 3.3.3 Raising a single objection when multiple may apply ​​​​​​​ 5.6.4.6 Identifying and raising citations ​​​​​​​ Further Reports Adverse 1. Check that the application is in force. 5.6.2.1 Request for Examination 2. Consider whether the amendments filed, and/or the arguments in rebuttal, overcome the objections: determine whether the amendments are allowable consider form of the amendment. 5.6.2.8 Further Report Considerations 5.7.4.2 Allowability of amendments before acceptance 5.7.4.3 Allowability of amendments after acceptance 5.7.4.1 Form of proposed amendments (statement of proposed amendments) 3. Check for new objections. Check for FERs. 3.3.2 Use of FERs (earlier search and examination reports) 4. Check if any material has been filed under sec 27. 5.6.4.5 Third Party Notifications 5. Maintain existing objections where appropriate. 5.6.2.8 Further Report Considerations 3.3.2 Use of FERs (earlier search and examination reports) 3.3.3 Raising a single objection when multiple may apply 5.6.4.6 Identifying and raising citations 6. Submit third and subsequent reports for review by the supervising examiner. 5.6.2.8 Further Report Considerations Clear 1. Check that the application is in force. 5.6.2.1 Request for Examination 2. Accept the case if the necessary requirements are met. 5.6.9.1 Conditions and Time for Acceptance 3. At the final report stage: review classification check that the Search Information Statement has been correctly completed, if necessary complete acceptance task submit for supervision if necessary. See Classification Chapter 4.6 Recording the Search Details 5.6.4.6 Identifying and raising citations 5.6.9 Acceptance, Grant, and Refusal of Applications