Responding to Examination Reports in Australia

Receiving an examination report from IP Australia is a routine and integral part of the Australian patent prosecution process. While Applicants often perceive such reports as adverse, they are better understood as a structured and necessary dialogue between the applicant and the Patent Office. In most cases, examination reports do not signal rejection, but rather identify issues that must be addressed before a patent monopoly can be granted in accordance with the Patents Act 1990 (Cth).

A well-considered response to an examination report is critical. It directly influences not only whether a patent is ultimately granted, but also the scope, strength, and enforceability of the rights obtained.

Understanding the Examination Report

An examination report is a formal communication issued under the authority of the Commissioner of Patents, setting out objections that the Examiner considers must be overcome before the application can proceed to acceptance. The objections are not arbitrary and are based on specific sections of the Australian Patents Act 1990 (Cth), associated regulations of the Patents Regulations 1991, and established examination practice.

The first and most important step is a careful and methodical analysis of the report. This involves identifying:

• the precise statutory basis of each objection;
• the factual assumptions made by the examiner; and
• the prior art documents or legal principles relied upon.

Objections typically fall into several recognized categories. These include objections relating to novelty and inventive step. A novelty objection means the Examiner has found a prior art document that discloses all the essential features of the invention, suggesting it is not new. An inventive step objection suggests that even if the invention is new, the difference between it and the existing prior art would have been obvious to a person skilled in the relevant technical field.

Other common objections may relate to a lack of clarity in the claims, the invention not disclosing the best method, or the claims not being fully supported by the description in the patent specification, as outlined in Section 40 of the Act. Examiners may also raise objections concerning patentable subject matter, questioning whether the invention constitutes a “manner of manufacture”. The examination report will cite the specific prior art documents or legal provisions upon which the Examiner’s objections are based.

Each objection in the examination report must be addressed on its own terms. A superficial or generic response to the examination report is rarely effective. The Examiner’s reasoning, as expressed in the report, must be engaged with directly and precisely.

Developing a Strategic Response

Once the objections are fully understood, the response strategy must be developed. This is a collaborative process that combines the Applicant’s technical knowledge of the invention with legal and procedural expertise. Importantly, the response strategy should not be limited to overcoming the immediate objections in the narrowest way possible. Instead, it should be directed towards securing a commercially meaningful scope of protection that remains legally robust.

Australian practice provides a clear but strict prosecution timeline. Under the Patents Act 1990 (Cth), all objections raised in the first examination report must be overcome within 12 months of its issue. Failure to do so results in the application lapsing. While this period allows for multiple rounds of correspondence, it places a premium on early, well-structured responses that anticipate likely follow-up objections.

Effective prosecution therefore involves not only addressing what the examiner has said, but also considering what they are likely to say next.

Legal Submissions and Technical Arguments

Many examination objections can be overcome through persuasive legal and technical submissions. These submissions must do more than assert disagreement. They must explain, with reference to the claims, the specification, and the prior art, why the Examiner’s conclusions are not legally or technically sound.

For example, novelty objections often hinge on whether a prior art document clearly and unambiguously discloses all essential features of a claim. Inventive step objections require careful analysis of the problem addressed by the invention, the common general knowledge at the priority date, and whether the claimed solution would have been arrived at as a matter of routine. In such cases, well-structured argument grounded in Australian case law and examination guidelines is essential.

Where appropriate, evidentiary material may also be relied upon. Experimental data, technical explanations, or expert declarations can assist in demonstrating unexpected advantages, technical effects, or practical difficulties overlooked by the examiner. While evidence is not mandatory in most cases, it can be decisive where inventive step or utility is contested.

Claim Amendments as a Strategic Tool

Amendment of the patent specification, particularly the claims, is often the most effective way to resolve examination objections. Amendments allow the scope of the invention to be refined so that it is clearly and explicitly distinguished from the cited prior art or aligned more closely with the disclosed technical contribution.

This is a delicate and highly skilled task. The amendments must be carefully worded to overcome the specific objections without unduly narrowing the scope of your protection. Furthermore, any amendments must be supported by the information contained in the original patent application; it is not permissible to add new technical matter.

Strategic claim amendment involves identifying features, parameters, or combinations already disclosed but not previously claimed, and incorporating them in a way that strengthens patentability without unnecessarily narrowing protection. This is a skilled exercise in claim drafting, requiring a detailed understanding of both the invention and the legal effect of claim language.

Amendments are typically accompanied by submissions explaining how the amended claims overcome the examiner’s objections. This explanation is not merely procedural; it assists the examiner in reassessing the claims efficiently and accurately.

Further Examination and Examiner Engagement

It is not uncommon for an Examiner to issue a further examination report, maintaining any outstanding objections and providing additional reasoning and objections. This does not indicate failure, but reflects the iterative nature of prosecution. The 12-month deadline from the first report still applies, underscoring the importance of a timely and well-considered initial response.

At this stage, it is often beneficial to reassess the prosecution strategy as a whole. This may involve refining arguments, proposing alternative claim structures, or addressing underlying concerns that were not fully resolved in earlier responses.

Hearings Before the Commissioner

In some cases, prosecution may reach an impasse. Where objections cannot be resolved through written correspondence, the Applicant may request a hearing before a Delegate of the Commissioner of Patents. A hearing provides an opportunity for oral submissions and direct engagement on complex legal or technical issues.

Hearings are formal but administrative in nature. They require careful preparation, including written submissions and a clear articulation of the issues in dispute. While not appropriate in every case, hearings can be effective where claim construction, legal interpretation, or nuanced technical reasoning is central to the dispute.

Acceptance and the Path to Grant

The objective of responding to an examination report is to place the application in a condition for acceptance. Once all objections are overcome, IP Australia issues a Notice of Acceptance, confirming that the application satisfies the statutory requirements for grant.

Acceptance triggers advertisement of the application and the commencement of the opposition period. In the absence of opposition, or following successful resolution of any opposition, the patent proceeds to grant, conferring enforceable exclusive rights in Australia.

How can we Assist?

Responding to an examination report is not a mechanical exercise. It is a critical stage in shaping the legal and commercial value of a patent. A well-reasoned response, grounded in statute, case law, and technical understanding, can transform an initially challenging report into a strong and defensible patent position.

When approached strategically, the examination process becomes an opportunity, not merely to obtain grant, but to secure protection that is both meaningful and resilient over the life of the patent.

With our firm as your trusted partner, you can be confident that your response will be handled with the utmost professionalism and strategic insight. We are committed to guiding you through every step of this journey, from deciphering the initial report to celebrating the final acceptance of your patent.

Contact us today for a free consultation.