Skip to content

Requesting and responding to patent examination reports

You’ve invented your marvellous creation, and you’ve filed a standard patent application, what happens next? This article will provide an explanation of how to manage patent examination reports from IP Australia.

When to request patent examination

If you have submitted your standard patent application, you need to request examination within five years of the filing date.

You can request a patent examination yourself, or you will be directed by IP Australia to request examination. If, after four years from the filing date, you still haven’t requested patent examination, IP Australia will issue you a direction to request examination. You will then have two months from the date of direction to request patent examination or your application will lapse.

What happens after requesting the patent examination

You will receive a response from IP Australia within 12 months of requesting patent examination. The response will be either a notice of acceptance or an adverse report.

If you receive an adverse report, you will be given the opportunity to overcome the objections that are raised in the report by making changes to the application. If you can overcome the objections, then your application will be accepted. Adverse reports may be issued continually until all objections are overcome.

You have a deadline of 12 months from the date of the first adverse report to file a response, or your application will lapse. If you have filed responses within this time, you will still need to overcome all the objections within the 12-month period from the first adverse report for your application to be accepted.

Continue reading this article below the form
Loading form

Responding to the patent examination report

If you have received an adverse report, usually it is because the application does not meet the requirements under the Patents Act.

Some common objections

The objections raised in the adverse report may be related to the invention itself not meeting the requirements under the Patents Act, or it may be that the application and its claims are not accurate or drafted well.

  • The claims are not written correctly and do not describe the elements of the invention
  • The claims are not consistent with what is described in the specification
  • The claims are written poorly and are unclear
  • The claims describe more than one invention
  • The application is not for a “manner of  manufacture”
  • The invention does not involve “inventive step”
  • The invention is not novel

What if the objection is unreasonable?

If you think that an object is unreasonable, you can ask the examiner to withdraw their objection. You can do this in situations where you believe the examiner may not have understood your invention or parts of the invention, or where you believe the examiner has not applied the law correctly.

You can send a letter to the examiner and make sure it includes details as to why the objection should be withdrawn. If the objection is withdrawn, you will not have to amend your application.

If your letter does not convince the examiner to withdraw the objections, you have the option of asking the Commissioner of Patents to arrange for your application and submissions to be considered by a different IP Australia staff member. If you are still not satisfied, you can file an appeal with the Federal Court of Australia.

LegalVision cannot provide legal assistance with patents. We recommend you contact your local law society.

Register for our free webinars

ACCC Merger Reforms: Key Takeaways for Executives and Legal Counsel

Online
Understand how the ACCC’s merger reforms impact your legal strategy. Register for our free webinar.
Register Now

Ask an Employment Lawyer: Contracts, Performance and Navigating Dismissals

Online
Ask an employment lawyer your contract, performance and dismissal questions in our free webinar. Register today.
Register Now

Stop Chasing Unpaid Invoices: Payment Terms That Actually Work

Online
Stop chasing late payments with stronger terms and protections. Register for our free webinar.
Register Now

Managing Psychosocial Risks: Employer and Legal Counsel Responsibilities

Online
Protect your business by managing workplace psychosocial risks. Register for our free webinar.
Register Now
See more webinars >
Dhanu Eliezer

Dhanu Eliezer

Growth Training Manager | View profile

Dhanu is a Growth Training Manager at LegalVision. Before joining LegalVision, Dhanu worked at Sydney Legal Practice, the Office of the Franchising Mediation Adviser and the Arts Law Centre. She has assisted hundreds of clients to protect and build their brand through trade mark registration and IP licensing. She is responsible for overseeing a smooth and effective network between clients, lawyers and project managers in the trade marks and intellectual property space.

Read all articles by Dhanu

About LegalVision

LegalVision is an innovative commercial law firm that provides businesses with affordable, unlimited and ongoing legal assistance through our membership. We operate in Australia, the United Kingdom and New Zealand.

Learn more

We’re an award-winning law firm

  • Award

    2025 Future of Legal Services Innovation Finalist - Legal Innovation Awards

  • Award

    2025 Employer of Choice - Australasian Lawyer

  • Award

    2024 Law Company of the Year Finalist - The Lawyer Awards

  • Award

    2024 Law Firm of the Year Finalist - Modern Law Private Client Awards

  • Award

    2022 Law Firm of the Year - Australasian Law Awards