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Examination review report

10.10 Section 29B(4) provides that:

The examination review report shall specify —

(a) whether the Examiner agrees or disagrees with the examination report, search and examination report or supplementary examination report, as the case may be;

(b) where the applicant has amended the specification of the application under subsection (2), whether each unresolved objection in the examination report, search and examination report or supplementary examination report, as the case may be, has been overcome in the amended specification; and

(c) the reasons for the Examiner’s decision under paragraph (a) and, where applicable, paragraph (b).

10.11 Thus, according to Section 29B(4)(a), the Examiner is required to review the examination report and specify whether he agrees or disagrees with the examination report. In arriving at his decision, the Examiner should take into accountthe written submissions filed by the applicant under Section 29B(1)(b), and consider whether or not said submissions overcome the unresolved objections in the examination report. The Examiner may also consider any other relevant documents on record, including earlier written opinions for the application and responses to the written opinions filed by the applicant so as to obtain a clearer idea of the proceedings that led to the adverse examination report, but should note that this is a review of the examination report and not a review of the previous written opinions.

10.12 With respect to the written submissions filed under Section 29B(1 )(b), applicants are advised to clearly identify the outstanding unresolved objections, and where applicable the relevant claims, in the examination report that are intended for consideration, and to provide relevant and well substantiated arguments for said consideration. This would place the Examiner in a better position to review the examination report.

10.13 It is noted that Section 29B(4)(a) does not limit the Examiner tospecify whether he agrees or disagrees with only the unresolved objections in the examination report, and hence the Examiner may disagree in the sense that he considers an objection that should have been raised in the examination report was not raised. This may result from, for example, a different construction of the claims during the examination review. Hence, an examination review report may comprise unresolved objections, which were not previously raised in the earlier examination report, on any of the grounds stated in Rule 46(1) (for the review of an examination report or a search and examination report) or in Rule 46(1A) (for the review of a supplementary examination report).

10.14 For the purposes of an examination review, the Examiner is not expected to actively perform further searches for additional prior art documents in order to demonstrate that a claim, which was acknowledged to be novel and inventive in the earlier examination report, would lack novelty and/or inventive step. The basis of consideration for novelty and inventive step during the examination review should only be with respect to those documents that are connected with the search and examination history of the file at IPOS.

10.15 Where there are amendments to the specification filed under Section 29B(2), the Examiner should also specify, according to Section 29B(4)(b), whether each unresolved objection in the examination report has been overcome in the amended specification.

10.16 During consideration of said amendments, the Examiner should also take into account the written submissions filed by the applicant in relation to the amendments. Any other relevant documents on record may also be considered. Applicants are advised to provide relevant and well substantiated arguments detailing how the amendments would overcome the unresolved objections in the examination report under review.

10.17 According to Section 29B(4)(c), the Examiner should specify reasons for his decision. To the extent possible, the examination review report should address  allissues concerning the examination report under review, and the reasons provided should clearly set out how the Examiner had arrived at his decision with respect to each issue. It is worthwhile to note that the examination review report may potentially serve as a useful reference in the event that a subsequent appeal is filed at the Courts for an application that has been refused by the Registrar in view of an adverse examination review report.