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.
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.
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.
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.