The patent examination process.

Within twenty one months from the date of filing of the application or, if priority has been claimed, from the date of priority, an applicant for a full–term patent must request a section 29 search report incorporating a written opinion as to patentability to be prepared. (Required by Section 29 of the Patents Act and Rule 24 of the Patents Rules).

A copy of the search report and opinion is sent to the applicant (or the applicant’s patent attorney) and unless the applicant withdraws the application, the report is published.

If the application is not withdrawn, an applicant is afforded an opportunity to amend the application in the light of the section 29 search report and opinion.

Any amendments must be submitted within eighteen months from the priority or filing date, or within six months of the date of issue by the Controller to the applicant of a copy of the section 29 report and opinion (whichever is later). If the applicant fails, before the expiry of this period, to submit either amendments to the application or a statement setting out the reasons why the applicant considers that no such amendments are necessary, the application may be refused. 

Should the applicant be using Evidence of Novelty in lieu of requesting a section 29 search report, these amendments, following the receipt of evidence, must be submitted within six months from the receipt of evidence by the Office.  If the applicant fails, before the expiry of this period, to submit either amendments to the application or a statement setting out the reasons why the applicant considers that no such amendments are necessary, the application may be refused.

Following the response of the applicant, the application including the search report and written opinion as to patentability will be examined to determine whether the invention is novel (is it new?), if there is an inventive step (is the difference between what is known in that area of technology and the invention an obvious step?) and if the invention is something that can be patented. The examination will determine if the application meets the legal requirements set out in the Patents Act and Rules.

Once the examination has been completed, if it appears that the application does not comply with a requirement of the Act or Rules, the applicant will be informed and will be afforded a specified time to make changes to the application to overcome the objections in the report.

It may be possible to resolve these objections by changing the description or claims. 

In response to any changes the application will be re-examined and will not proceed to grant until all objections have been overcome.

If all of the objections have not been overcome or resolved within the time specified, the application may be refused.

If the application as originally filed or as amended complies with the requirements of the Act and Rules, the applicant will be requested to pay the grant fee and on payment of the fee the patent will be granted.

The foregoing is a brief summary of the search and examination provisions and is not intended to be an authoritative statement of the relevant law and procedure and is not a substitute for the legal requirements set out in the Patents Act and Rules.

It is strongly recommended that you seek the professional assistance of a patent attorney before applying for and prosecuting a patent application.