Tips for Responding to an Adverse Examination Report
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If your trade mark does not meet IP Australia’s requirements, you will receive an adverse examination report in response. This report will give you the reasons you did not meet the requirements and give you options to respond and overcome these reasons. These options will differ depending on the issues mentioned in the report. To respond to an adverse examination report, you will need to provide written submissions within 15 months from the date of the adverse examination report to argue your case. This article will take you through tips to respond to an adverse examination report.
Keep Track of the Time
You will have up to 15 months to respond to the adverse examination report. It is important to consider that this 15-month time frame will also include time to receive the examiner’s response, so you should not leave your submissions to the last minute.
However, if you are approaching the end of the 15 months and need more time, you can apply for an extension of time. You will need to apply for this extension before the end of the 15 months. If you fail to request a time extension before the 15 month time period ends, you can apply for an extension, but you will need to explain why you could not request an extension before the expiry date. There are also fees associated with applying for a time extension. Without paying the necessary fees, the examiner will not examine your response.
Standard vs. Innovation Patents
Importantly, you must review the timelines for submitting amendments as there are differences between standard and innovation patents. Standard patents are for general patents, while innovation patents relate to brand new ideas.
Likewise, the time allowed for responding to your adverse examination report will vary accordingly. For standard patents, any issues marked on examination reports require resolution within a year of the first report date. There are cases where report amendments do not fully overcome the stated issues or even make them worse. In this case, another report will be issued. However, you must still resolve amendments from the initial report within 12 months.
Alternatively, innovation patents have less leniency and require application issues to be settled within six months of the initial examination. As with most IP applications you will come across, failing to handle these conflicts by the expiration date will result in a lapsed application. Therefore, you will need to make another submission.
Understand the Report
An adverse examination report will provide reasons for why you did not meet the requirements. You must understand these reasons so that you can respond appropriately.
Responding to Objections
Some common reasons why your trade mark might not meet the requirements and ways you can potentially respond are listed in the table below:
| Reason for objection | How to respond |
| Your application did not distinguish the goods or services class you are filing under | Trade mark applications rely on your goods or services being part of a specific class. If there is confusion about the category you have selected or you accidentally selected the wrong category, you can amend your application to fix this. You can pay to add an additional class of goods to services to your application. |
| Your trade mark is descriptive and has a lack of distinctiveness | If your trade mark contains descriptive or generic words, you will need to show proof of continued use of your trade mark. This evidence will need to show that your trade mark has acquired a reputation and is recognised by the Australian public, making it permissible to use. |
| Your trade mark is identical or substantially similar to another trade mark | This objection will arise if your trade mark is too similar or identical to another trade mark in the same goods or services classification. Your response will depend on your specific circumstances. For example, you might be able to prove that you have been using your trade mark for longer than the trade mark in dispute. |
| Your application had incorrect details | For simple errors such as incorrect identification details, you can provide the correct details to amend your application. |
There will also usually be options for settling these issues set out in the report, so use the advice you receive in the report to your advantage when fixing these problems.
Application Amendments
Amending your application is one way to surpass objections present in your examination report. This involves making edits to non-compliant parts of your application. To make these changes, IP Australia will need:
- a statement that lists out the requested amendments and points out which pages need replacement; and
- the new pages you are submitting and a page outlining where you made each change in the application.
Further, you need to write the first statement on a separate page with a signature, the date and your patent application number. In addition, you should make sure to number each item chronologically. By taking each of these procedural steps into consideration, your amendments should be processed quickly by IP Australia.
Provide Evidence
Depending on the reasons for receiving an adverse examination report, the evidence you should provide will differ. Some examples of evidence you can provide to show the use of your trade mark include:
- marketing materials, such as proof of advertising;
- packaging containing your trade mark;
- consumer surveys proving recognition of your trade mark; and
- evidence showing long term use, such as old websites or news articles showing the trade mark.
You should provide this evidence in the form of a statutory declaration.
Pay the Fees
Finally, you will need to ensure that you have been keeping up with the fees associated with your application. Without paying these fees, your examiner will not consider your response. Likewise, your examiner will consider your patent application and look over any amendments or written arguments you may have submitted. Additional objections will result in another report and listing the remaining errors which require editing.
Key Takeaways
If your trade mark does not meet IP Australia’s requirements, but you still want to use your trade mark, you will need to respond to the adverse examination report. Your response will need to:
- be submitted within 15 months;
- be in the form of written submissions; and
- include evidence.
Finally, do not forget to pay associated fees with your application. For help responding to an adverse examination report or opposing a trademark, our experienced trade mark lawyers can help. Get in touch with them on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
An adverse examination report is a report you receive from IP Australia if your trade mark does not meet IP Australia’s requirements. Further, an adverse examination report will give you the reasons why you did not meet the requirements.
You have 15 months to respond to the adverse examination report, including time for the examiner to respond. However, for a fee, you can seek an extension of time if needed.
Your adverse examination report response will need to provide evidence about your use of the trade mark. The evidence required will be different depending on the reasons cited in your adverse examination report. This evidence should be in the form of a statutory declaration.