Reading time: 3 minutes

If you have made a request to IP Australia to examine your standard patent application, you will receive one of two responses. You will either be notified that your patent has been accepted, or you will be issued with an adverse examination report.

If you receive an adverse examination report, do not worry; this does not mean the end of your patent. You will still have the opportunity to amend your application and overcome the objects that are raised in the report.

In this article, we describe and distinguish the more common objections to patent applications, and take you through some of the steps that you can take to manage them.

Invention not properly defined

The objection may be that the claims that form the specification are not clearly describing the features of the invention. To overcome this, you can rewrite your claims so that they focus on defining your invention.

Inconsistency

Your claims need to be based on your description in the specification. The examiner may raise an objection if your claims do not define the invention in the specification properly.

For example, if there is a particular feature of the invention that is essential to the function of the invention, and you address this in the description, you must include it in the claims.

Again, this objection can be dealt with by changing your claims so that they are consistent with your specification.

Clarity

Claims are very often objected to because they are written poorly. You need to be careful to make sure that your claims are logical and grammatically correct. Don’t use ambiguous words and make sure you are inconsistent in the terms that you use.

These objections are easily overcome by rewriting the claims and writing more clearly.

More than one invention

It is possible for your claims to be prepared in such a way so that they define more than one invention. Either you have not prepared the claims properly or you actually do have more than one invention.

If you have defined the invention incorrectly, you can amend this be reviewing your claims and changing them so that they define one invention.

If you do realise that you actually have more than one invention, you will want to protect each of the inventions with a patent, which can also be done through divisional applications.

Not meeting the requirements of an invention for a patent

Other objections to your patent application may relate to whether your invention is indeed a patentable invention. For example, the Patents Act requires the subject matter to be a “manner of manufacture”. If your application is not for a manner of manufacture, then you are unlikely to be granted a patent. Similarly, the invention must involve an inventive step that builds on common knowledge in the industry. Finally, the claims must show that the invention is novel.

Conclusion

Some of these issues can be addressed by redrafting your claims, but some may reveal that your invention the requisite threshold of patentability. It can be hard to distinguish this, so it is important to have a professional help prepare your patent application.

If you need a patent attorney or IP law specialist’s assistance, give LegalVision a call today!

Webinars

New Kid on the Blockchain: Understanding the Proposed Laws for Crypto, NFT and Blockchain Projects

Wednesday 25 May | 10:00 - 10:45am

Online
If you operate in the crypto space, ensure you understand the Federal Government’s proposed licensing and regulation changes. Register today for our free webinar.
Register Now

How to Expand Your Business Into a Franchise

Thursday 26 May | 11:00 - 11:45am

Online
Drive rapid growth in your business by turning it into a franchise. To learn how, join our free webinar. Register today.
Register Now

Day in Court: What Happens When Your Business Goes to Court

Thursday 2 June | 11:00 - 11:45am

Online
If your business is going to court, then you need to understand the process. Our free webinar will explain.
Register Now

How to Manage a Construction Dispute

Thursday 9 June | 11:00 - 11:45am

Online
Protect your construction firm from disputes. To understand how, join our free webinar.
Register Now

Startup Financing: Venture Debt 101

Thursday 23 June | 11:00 - 11:45am

Online
Learn how venture debt can help take your startup to the next level. Register for our free webinar today.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Innovation Award 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Award 2020 Employer of Choice Winner – Australasian Lawyer
  • 2020 Financial Times Award 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year Award 2021 Law Firm of the Year - Australasian Law Awards
  • 2022 Law Firm of the Year Winner 2022 Law Firm of the Year - Australasian Law Awards