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IPA patent 5.6.2-factors-to-consider-before-commencing-examination
IPA patent 5.6.2-factors-to-consider-before-commencing-examination — IP Australia Patent Manual of Practice and Procedure – 5.6.2 Factors to consider before commencing Examination
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Also in this Chapter:
5.6.1 Relevant Dates, Definitions, Legal Standards, and Other Prescribed Matters (e.g. Publication)
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
5.6.11 Patents of Addition
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
5.6.16 Annex A - Procedural Outline for Full Examination of a Standard Patent Application
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
Sub-chapters:
5.6.2.1 Request for Examination
5.6.2.2 Application in a State of Lapse?
5.6.2.3 Extension of Time been Requested (s223 actions)
5.6.2.4 Payment of Fees
5.6.2.5 Translations of Specifications, Article 19 and Article 34 Amendments (Requirements for Certification, Poor Translations
5.6.2.6 Obtaining Priority Documents
5.6.2.7 Excess Claims Fees and Invitation to Pay
5.6.2.8 Report Dispatch, Correction of Report etc.
5.6.2.9 Further Report Considerations
5.6.2.10 Convention applications
Some examples of factors that should be considered before commencing examination are with regards to whether all the documents required to make up the application are on file:
if some documents appear to be missing, examiners should ascertain from the filing receipt and the correspondence whether the missing documents were in fact filed;
if any filed documents cannot be located, CEG should be notified immediately; and
where documents are present, but which clearly do not belong in the file, CEG should also be informed.
