IPA patent 8.2.1-restriction-of-the-report — IP Australia Patent Manual of Practice and Procedure – 8.2.1 Restriction of the Report

Also in this Chapter: 8.2.2 Not All Claims Previously Searched and/or Examined 8.2.3 Law and Practice Differences Key Legislation: Patents Act: s40(2)(c) Specifications s102(1) What amendments are not allowable? On this page Inventive Concept Cannot be Determined From the Specification Claims of Indeterminate Scope Lack of Unity Manner of Manufacture Issues Incorporation of New Matter Innovation Patent With More Than Five Claims Examiners may find it necessary to restrict their report, and reserve opinion on certain aspects, where deficiencies in the specification make it impractical to issue a comprehensive report. Situations where restriction of the report may be justified are given below. This list is not exhaustive and there may be other circumstances where it is impractical to issue a comprehensive report due to deficiencies in the specification. Note: Where the extent of the report is restricted in some manner, a statement to this effect must be included in the report. The statement should include the reasons for restricting the report, together with the advice that opinion in respect of those matters not covered by the report is reserved. Inventive Concept Cannot be Determined From the Specification Where the specification is drafted in such a way that it is impossible to determine from the specification as a whole what the inventive concept is, an objection should be taken that the specification does not fully describe the invention, because it is not possible to determine the features of the invention from the specification as a whole. Examiners may reserve opinion with regard to the requirements that the claims define the invention and are fairly based. Claims of Indeterminate Scope Where the claims are drafted in such a way that it is not possible to determine their scope in any meaningful way, and it is also not possible to determine the inventive concept from the description, examiners may defer the search and reserve their opinion (see 4.1.4.2.4 Reserving the Search ). However, where the inventive concept can be determined from the description, the search should be conducted in respect of that subject matter, with a note included in the report indicating the subject matter searched. Lack of Unity Where the claims define more than one invention requiring additional searches, examiners should follow the procedures outlined in 2.1.6.2.4 Lack of Unity and 4.1.4.2.4 Reserving the Search . Manner of Manufacture Issues When the claimed invention is clearly not in respect of a manner of manufacture and it is not readily apparent what subject matter might reasonably be expected to be claimed, taking into account the contents of the description and drawings and the common general knowledge in the relevant technical field, the procedures outlined in 4.1.4.2.4 Reserving the Search should be followed. Incorporation of New Matter Where there has been new matter incorporated, such that the claims claim matter not in substance disclosed in the specification as filed, examiners should refer to 2.13.6 Matters of Form and 2.23.8.2 Section 102(1) Examination Practice, Reporting on Amendments Not Allowable Under Section 102(1) . Innovation Patent With More Than Five Claims Where an innovation patent has more than 5 claims, and not all claims can be examined with negligible additional effort, examiners should object that the innovation patent does not comply with s40(2)(c) and reserve opinion on all other examination issues (see 2.31.4.4 Ground (1): Section 40 ).