It is important to bear in mind that a request for modified examination does not remove the examiner's duty to examine the application. Rather, it results in what the examiner's manual refers to as a "truncated search". This means that a report is issued much quicker since the examiner does not carry out a full search. Also, there are no s40 considerations, which relate to intrinsic issues, such as sufficiency of description, proper invention definition and the requisite "fair basis" relationship between the claims and the description.
It follows that the examination is limited, in terms of s48, to subject matter, novelty and inventive step.
Potentially, the biggest disadvantage with modified examination is that the Australian patent specification must be amended to bring it into conformity with the specification of the allowed, corresponding patent. As a result, it will not be possible to amend the Australian specification for compliance with Australian best practice.
Some amendments that I usually make for best practice compliance are:
- Paraphrasing the claims in a summary portion to ensure compliance with our fair basis requirements
- Adding multiple dependencies (note that multiple dependencies do not add to the claim count)
- Adding omnibus claims
- Adding a defining paragraph for "comprise" and its derivatives to ensure that it is not given a narrow meaning