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Supplementary Examination

Responding to written opinions

9.84 As set out in Section 29(8), where the Examiner raises one ormore matters in a written opinion, the applicant will have only one opportunity to respond. They may make amendments to overcome any deficiencies in the specification and/or make submissions in rebuttal.

9.85 The response must be filed within 3 months of the Registrar’s letter forwarding the written opinion. If no response is filed within the prescribed period, the written opinion is taken to be the supplementary examination report.

9.86 If the Examiner considers that the submissions and/or amendments do not overcome the objections, an adverse examination report will be established. The Registrar will then issue a notice of intention to refuse the application under Section 29A(3). The options for the applicant at that stage are to request an examination review (Rule 46A(2)) or to file a divisional application.

9.87 An applicant may withdraw the request for supplementary examination and file a request for search and examination or examination, but the withdrawal of the request for supplementary examination must be done before the establishment of the supplementary examination report. The request for search and examination or examination must be filed within 36 months from the earliest priority date (Rule 43(1)).

9.88 Supplementary examination may be requested within 54 months from the earliest priority date (Rule 43(3)), and if the 36-month period in which the request for search and examination or examination may be filed has expired, the applicant may consider requesting an extension of time to request for search and examination or examination. The applicant may also file a divisional application in such cases.