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Requirements under Section 29(1)(d)

Final results

9.31 As set out in section 29(1)(d)(i), supplementary examination may be based on the final results of a search and examination on:

  • a corresponding application; or
  • a corresponding international application; or
  • a related national phase application; or
  • a PCT application.

9.32 Section 2(1) sets out the definitions for the different foreign or international applications on which a supplementary examination may be based. These are discussed in later sections.

9.33 The applicant may rely on the final results for corresponding or related applications in a prescribed office. According to Rule 42A(2)(a)(i), there is no specific format for these final results, but they must clearly state the claims in question and give a positive indication in relation to novelty, inventive step and industrial applicability.

9.34 The indication must be across the full scope of the claim. If the foreign report indicates that the search and examination has been limited or truncated in any way then the applicant will need to restrict their claims to the matter for which a search and examination has been carried out and a positive indication provided.

9.35 Examples of suitable final results include:

  • A notice of intent to grant stating that specific claims are allowable.
  • An examination report stating that certain claims are novel, inventive and industrially applicable.
  • A notice of refusal stating that certain claims are novel, inventive and industrially applicable, but that the application is refused on other grounds.

9.36 Rule 42A(4) codifies that in the case of a corresponding international application the IPRP in the international phase (that is IPRP Chapter I or Chapter II) is the final result. In the case of a PCT application, Rule 42A(2)(b) codifies that the IPRP is the final result. If subsequent examinations have been done on the PCT application during its national phase in one or more countries, these are not taken into account in the supplementary examination – the IPRP is still considered the final result and no additional citations or objections should be raised.

9.37 In the case of an application relying on an IPRP Chapter I, the Examiner should verify whether the applicant has made any amendments under Article 19 of the PCT since these amendments will not be enclosed with the IPRP Chapter I report. The allowability of such amendments shall be considered in accordance with the practices set out in Section 9J of these Guidelines.

9.38 Similarly to the above considerations in relation to corresponding or related applications in a prescribed office, the positive indication must be across the full scope of the claims under consideration.