Issue 06/11 | February 24, 2006
Examining the Case for Modified Examination

Substantive examination of an Australian patent application commences following a request for examination being made by the applicant. In certain circumstances, the applicant of the Australian application may choose to file a request either for normal examination or for modified examination. This article explains the processes of examination under these alternatives, and considers the issues that should be evaluated in deciding which route of examination to choose: normal or modified?

Prerequisites for modified examination

The option to request modified examination in Australia arises only when:

  • the Australian application is a complete application for a standard patent;
  • a corresponding patent has been granted or will be granted in the United States of America, or Canada, or New Zealand or a country which is a signatory to the European Patent Convention; and
  • the specification relating to the corresponding patent was granted in English.

Therefore, determining whether one has the option of filing for modified examination is easy enough. If this avenue is available, the more difficult task before you is to decide whether to file for normal examination or modified examination.

Modified Examination or normal examination?

A decision as to which type of examination is to be requested should be based on a consideration of several factors - one is PATENTABLE SUBJECT MATTER. Why this is relevant is probably easiest to explain with an example. As we know, what is considered patentable subject matter varies in different countries. Claims to a method of medical treatment are considered patentable subject matter under Australian patent law but not in Europe. In the case of an Australian patent incorporating a claim to a method of medical treatment, a request for modified examination should not be based on a European case. Further examples in differences in approach to patentable subject matter between Australia and other countries can be found in computer software claims or business method claims.

Under normal examination an application is examined for COMPLIANCE with certain grounds, including whether or not the invention is novel and involves an inventive step, and whether the specification complies with Section 40 of the Australian Patents Act 1990. Section 40 requires that the specification describes the invention fully, including the best method known to the applicant of performing the invention and ends with claims defining the invention. Section 40 further requires that the claims be clear, succinct and fairly based on the matter described in the specification and that the claims relate to one invention only.

Under modified examination the grounds of examination still include those of novelty and inventive step but the specification is not examined for compliance with Section 40. This means that fair basis and plurality of invention issues are not examined. The issue of plurality of invention is probably of less concern as this is not a ground for revocation of a patent in Australia. However the need to comply with the FAIR BASIS ground raises more difficulties under modified examination than it does under normal examination and how this can occur is described below.

Fair basis requires that the claims be fairly based on matter described in the body of the specification. To provide basis for the claims, it is common practice in Australia to include consistory statements in the body of the specification which are matched with, at least, the independent claims. However, under modified examination the Australian specification needs to be brought into conformity with the foreign specification on which the request for modified examination is based. As such, consistory statements cannot be introduced into the Australian specification under modified examination.

Under normal examination, where the claims defining the invention are amended during prosecution of an application, the corresponding consistory statements are also amended to correspond with the amended claims. This is because where there are no consistory statements or there is inconsistency between a consistory statement and the corresponding claim, a lack of fair basis issue may arise.

Foreign specifications often incorporate statements which set out the aim or object of an invention. Such statements may be useful in identifying the inventive step of an invention, but under Australian patent law they may result in the inventive concept being narrowly interpreted and lead to claims being held invalid for reason of lack of fair basis. As a result, when an application undergoes normal examination these aim or object statements can be deleted and amendments to consistency statements can be made to meet the fair basis requirements. This avenue is not available under modified examination where the Australian specification must conform to the corresponding granted foreign specification.

Finally, under Australian practice, omnibus claims are normally added. Naturally, omnibus claims cannot be added to the claim set during prosecution where modified examination has been requested.

What is the implication of this? By requesting normal examination the opportunity to amend the specification to bring it into the best possible form under Australian practice is available. Under modified examination the specification must conform with the foreign specification which may result in a patent that is more narrow than necessary and vulnerable to objection for lack of fair basis, and plurality of invention.

Second thoughts about modified examination?

If, following acceptance of an application which has undergone modified examination, the applicant considers it preferable that the application be the subject of normal examination, a divisional application may be filed having the same specification as the original application. A request for normal examination may then be filed in respect of the divisional application. If the divisional application is subsequently accepted and the accepted claims have the same scope as the parent, a patent cannot be sealed whilst the parent remains in force, so the parent is then surrendered.

An applicant may withdraw a request for modified examination at any time before acceptance of the application and request normal examination instead. A fee is payable if the applicant asks for normal examination after modified examination has begun. For cases where a request for modified examination has been filed, the provision requiring the filing of foreign search results does not apply. However, when a request for modified examination is converted to a request for normal examination, all relevant search results must be filed within the appropriate time limits.

An Easy Decision

As Australian patent attorneys we would normally advise against requesting modified examination so as to achieve maximum flexibility in prosecuting and amending the Australian specification to place it in the best possible form under Australian practice. However, in certain circumstances modified examination may provide for a simplified examination of an application, particularly, in cases where novelty and inventive step issues have been dealt with comprehensively during prosecution of the foreign patent.

For further or more specific information on modified vs normal examination in Australia, please contact Greg Whitehead [gwhitehead@fbrice.com.au], Chris Owens [cowens@fbrice.com.au] or any of the other practitioners of F B Rice & Co via our website at www.fbrice.com.au.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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