Most patent applicants receive an examination report from IP Australia.
During the examination stage of the patent journey, examiners are required to raise every objection they can reasonably support, and a first report listing several is completely normal.
A key consideration is timing. The first examination report starts a 12-month period in which every objection must be overcome and your application accepted. That period includes the time IP Australia takes considering your response, so acting early can be crucial.
Responding to patent examination reports and objections
"I can’t recommend Warren highly enough! We came to him after the deadline to file our convention patent application had passed, feeling stressed and unsure if we could still protect our invention in Australia. Warren’s deep knowledge of patent law and practical advice immediately put us at ease. He reviewed our situation, filed our application, and prepared a strong case for an extension of time. To my delight, the request was approved—a massive win for our business!"
- Sveta Želazko
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
The deadline
Australia doesn't set a response deadline. This often surprises people applying from other countries (e.g., based on their own standard or PCT applications).
What Australia sets is an acceptance deadline: 12 months from the date the first examination report issued. Within that window, every objection, including any raised in later reports, has to be overcome and the application placed in order for acceptance. If acceptance isn't achieved in time, the application lapses.
Three practical consequences:
Respond early. Each round trip can take weeks. Applicants who wait until month 10 to file a first response frequently run out of time.
Further reports come back fast, usually within about twenty working days, so several rounds are workable if you start promptly.
If the deadline genuinely can't be met, filing a divisional before the application expires keeps a pending application alive and resets the examination cycle.
Which objection have you got?
Lack of novelty, section 18(1)(b)(i)
The examiner says one document published before your priority date already discloses everything in one or more of your claims.
These are often addressable. Novelty is strict: the document has to disclose every single feature in a claim. One missing feature defeats the objection outright, which means the right response simply needs a claim amendment or argument to convince the examiner that the document does not disclose your entire invention as claimed.
Lack of inventive step, section 18(1)(b)(ii)
The examiner accepts that no single document discloses your invention, but thinks that getting there would have been obvious to a person of ordinary skill in the relevant field of technology.
Inventive step objections are more subjective and can be more difficult to address, not least because it's a judgement call rather than one-for-one comparison.
Examiners sometimes combine documents to arrive at your claimed invention, or consider your invention obvious only because they’ve had the benefit of hindsight after reading your patent specification.
This is where the prowess of a skilled Australian patent attorney who understands your invention deeply is worth their weight in gold.
Manner of manufacture, section 18(1)(a)
The subject matter test, and the usual obstacle for software, business method and diagnostic inventions in Australia. The case law here has moved considerably and remains unsettled. If your invention is computer-implemented, you may have a higher chance of facing this one and you’ll need a patent attorney with the right subject matter expertise to guide you.
Section 40 objections
These are about the specification rather than the invention: whether it discloses the invention clearly and completely enough for a skilled person to perform it, whether you disclosed the best method known to you, and whether the claims are clear, succinct and supported by what you described.
Support objections are the dangerous ones. If the original specification was thin, there may be no way to rescue a claim, and no amount of argument fixes a document written years ago.
How I'd respond
Argue first, if there's a case. Examiners are under time pressure and are often trigger happy when it comes to firing off that first examination report. As a result, they might not have properly considered the prior document they’ve cited, or they might have combined prior art that wouldn't have ordinarily been combined, and find features in disclosures that aren't there. A well-reasoned submission that the objection was wrongly made can preserve your claim scope and can cost less than a round of amendments.
Amend where you have to. Amending the claim(s) to include a feature the prior art doesn't disclose will defeat a novelty objection. The judgement is how much to concede. Narrow too far and you end up with a claim that a competitor can readily design around.
The goal of a seasoned patent attorney is to help you secure the broadest scope of protection by conceding as little as possible to overcome any novelty and inventive step objections.
The constraint that governs everything: Every amendment has to be supported by something already disclosed in your original specification. You can't add new matter, however obvious the addition might seem. Which means the document filed at the very start of the process can set the outer limit of what you can still do now, years later. It's the strongest argument I know for spending properly at the provisional stage.
When it can't be saved
Sometimes the prior art can be fatal and there's no commercially useful patent available. I'll be upfront with you about this, rather than sending invoices for three more rounds of amendments and arguments that won’t win. It's an unpleasant conversation, but it’s the right thing to do.
With a professionally drafted patent specification disclosing an invention that is at least novel, it is often the case that something can be salvaged, even if it means having to accept narrower claims than you might like.
Taking over from another attorney
You're not locked in. Transferring a patent application is straightforward, and people move for ordinary reasons: the matter isn't progressing, costs have crept up without explanation, or they can't get a clear answer about their prospects.
I'll review the file, the cited prior art and the time remaining, and tell you what's realistically achievable and what it'll cost. If I think your current attorney is handling it well, I'll say so and you'll have spent nothing.
If you're holding a first examination report and the clock is running, don't procrastinate.
Frequently asked questions
How long do I have to respond to an Australian examination report?
There's no fixed response deadline. All objections must be overcome and the application accepted within twelve months of the first report issuing. That period is non-extendible and includes the examiner's consideration time, so responses need to be filed well before it runs out.
Is it normal to receive a patent objection?
Yes. Most Australian applications receive at least one examination report with objections. Examiners are obliged to raise every objection they can reasonably support, at least at first instance.
Can I amend my claims after an objection?
Yes, within the limits of what your original specification disclosed. You can't add new subject matter, which is why the breadth of that first document has such a long shadow.
What happens if I miss the 12-month acceptance deadline?
The application lapses. An extension of time is available in limited circumstances involving error or omission, but it isn't something to plan around. Filing a divisional before the deadline is the more reliable way to keep something pending.
What's the difference between a novelty and an inventive step objection?
A novelty objection says one document discloses every feature of your claim. An inventive step objection accepts that none does, but still maintains that the invention would have been arrived at as a matter of routine. Novelty objections are usually easier to overcome because they require an exact match, whereas inventive step objections require human judgement and are therefore more exposed to the examiner's interpretation of the law and the subject matter at hand.
Can I change patent attorneys partway through?
Yes, at any stage. The file transfers and the new attorney takes over. If you're in examination with a deadline approaching, a second opinion sooner is worth more than one later.
Email through the report
Email me the examination report and I'll come back with my assessment: warren@ipsavvy.com.au
Alternatively, book a call with me below: