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Unresolved objections

10.7 Section 29B refers to “unresolved objections” in relation to the adverse examination report subject to an examination review. While there is no explicit definition for “unresolved objections” in the Act or the Rules, Rule 46(1) and Rule 4 (1A) do explicitly prescribe the adverse opinions that an Examiner should notify the Registrar of in his written opinion during an examination or a supplementary examination respectively. Adverse opinions relating to any of the prescribed matters in Rule 46(1) or Rule 46(1A) would be regarded by the Registry to be “objections” for the purposes of an examination or a supplementary examination. When the applicant has exhausted all available means to overcome the objections during the examination or during the supplementary examination, these outstanding objections become unresolved objections in the examination report.

10.8 Hence, for an examination report issued under Section 29(4) or a search and examination report issued under Section 29(5), an unresolved objection would mean an opinion in relation to any the following matters stated in Rule 46(1 (a)-(f):

(a) the description, claims, or drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on —

(i) the novelty or inventive step of the claimed invention; or
(ii) whether the claimed invention is capable of industrial application;

(b) the invention defined in any claim —

(i) does not appear novel;
(ii) does not appear to involve an inventive step; or
(iii) does not appear to be capable of industrial application;

(c) the conditions specified in sections 13 and 25(4) and (5) have not been complied with;

(d) the application discloses any additional matter referred to in section 84(1) or (1A) or any matter referred to in section 84(2);

(e) a claim relates to an invention in respect of which no search has been completed, and the Examiner has decided not to carry out the examination in respect of that claim; or

(f) there is —

(i) any other application for a patent for the same invention, with the same priority date, filed by the same applicant or his successor in title; or

(ii) any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or his successor in title.

10.9 For a supplementary examination report issued under Section 29(6), an unresolved objection would mean an opinion on any the following matters stated in Rule 46(1A)(a)-(f):

(a) any claim in the application is not supported by the description of the invention;

(b) at the time the prescribed documents referred to in section 29(1)(d) are filed, any claim in the application in suit is not related to at least one claim which —

(i) is set out in the prescribed documents relating to the corresponding application, corresponding international application or related national phase application referred to in section 29(1)(d), or to the application in suit during its international phase; and

(ii) has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility);

(c) the invention is an invention referred to in section 13(2) that is not patentable;

(d) the invention is an invention referred to in section 16(2) that is not to be taken to be capable of industrial application;

(e) there is —

(i) any other application for a patent for the same invention, with the same priority date, filed by the same applicant or his successor in title; or

(ii) any earlier grant of a patent for the same invention, with the same priority date, to the same applicant or his successor in title; or

(f) the application discloses any additional matter referred to in section 84(1) or (1A) or any matter referred to in section 84(2).